EK patent infringement lawsuit against Chisco takes a curious turn

On March 28, SNEWS® received a notification email from EK Ekcessories announcing the company had filed a lawsuit on March 18, 2005, in U.S. District Court for the District of Utah against Chisco Sports Accessories for alleged patent infringement of the company's utility and design patents on EK's 3-Way Eyewear Retainer. But things are sometimes not quite as simple as they seem.
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On March 28, SNEWS® received a notification email from EK Ekcessories announcing the company had filed a lawsuit on March 18, 2005, in U.S. District Court for the District of Utah against Chisco Sports Accessories for alleged patent infringement of the company's utility and design patents on EK's 3-Way Eyewear Retainer.

At issue is Chisco's P2 Powercord which uses a very similar (and EK alleges virtually identical) method of attaching an eyewear retainer cord to eyewear. EK is alleging infringement of utility patent 6,709,100, as well as design patents 486,511 and 487,015.

Sounded simple enough to us, but never one to be satisfied with a single side of a story, SNEWS® dug beyond the press release and discovered in short order that Chisco also has a patent -- something EK neglected to mention in its press release in late March. And here is where it starts to get messy.

EK's utility patent was applied for on June 27, 2002, and granted on March 23, 2004. Chisco's utility patent (6,764,177) which cites EK's 3-Way Eyewear Retainer in additional references, was applied for on Feb. 6, 2003, and granted on July 20, 2004. In both cases, the primary examiner at the U.S. Patent and Trademark Office was Hung Xuan Dang.

We contacted Melissa Reynolds, marketing and PR director for EK, who told us on April 11 that EK had "just learned of the Chisco patent."

Chisco's Co-owner Gregg Chisolm told SNEWS® that, "I am trying to work it out with Ed (Kalbach) personally before we get the lawyers involved. We stand by our patent and believe it clearly demonstrates we have different products and do not infringe on any of their patents."

A settlement doesn't appear likely though, unless it is Chisco that does the settling.

Ed Kalbach, president and owner of EK, told us that, "We came up with the product idea first and Chisco copied it. That the same examiner granted them a patent for the same product is an embarrassment to everyone and there is no doubt he made a very serious mistake. The facts will all be proven later in court."

SNEWS® View: Hmmmm….how is it possible that the EK legal team did not learn -- before filing legal proceedings -- that Chisco was granted a patent for the very product they were claiming infringes on the EK patent? Heck, it took us all of five minutes to find the information needed online, including all relevant patent records and court documents. What is perhaps even more stunning though is the fact that both patents were granted by the same examiner -- months apart. Either that is proof that the products are very different, or it is proof the patent office is so overwhelmed and overloaded it is granting patents it shouldn't. Bottom line is now we have a case of dueling patents, in addition to dueling products. Sounds to us like the lawyers are going to get very, very wealthy on this one unless the EK and Chisco folks start talking sense and settlement to each other. And all this over a product that sells for under $8? Clearly both companies sell a lot of eyewear retainers. We do know that Ed and his team at EK are very proud of their products and inventions, and will defend them vigorously. We also know that more than one company has ended up paying Ed royalties and licensing fees in the past.

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