http://gizmodo.com/380055/blue-jeans-cable-calls-
bs-on-monster-cable-patent-suit-vows-to-fight-to-bloody-death
Bullshit
patent suits are annoying when it's a do-nothing patent holder trying
to extract cash from fat corporate wallets, but even more so when it's
a bigger company trying to muscle over little ones. Like Monster Cable suing Blue Jeans Cable
for having connectors that looked like theirs. Blue Jeans' CEO, a
former evil lawyer, has issued a ripping rebuttal, pointing out that
"the gross morphology of the RCA plug is pretty well dictated by
function" before throwing down, "I would rather spend fifty thousand
dollars on defense than give you a dollar of unmerited settlement
funds." Here's the whole ballsy letter:
RE: Your letter, received April Fools' Day Dear Monster
Lawyers, Let me begin by stating, without equivocation, that I have no
interest whatsoever in infringing upon any intellectual property
belonging to Monster Cable. Indeed, the less my customers think my
products resemble Monster's, in form or in function, the better.I am evaluating your claim that the connectors on certain Tartan
brand products infringe Monster's design patents and trademarks.
However, the information supplied with your letter is plainly
inadequate to support a claim of infringement and so I am writing to
you to ask for further information and clarification regarding your
claims.I will begin by addressing your trademark/trade dress claim. You
have referred to two trademark registrations, and have attached some
printouts from the USPTO system but the depiction of the marks on the
drawings provided is small and indistinct, making it difficult to
determine exactly what the alleged resemblance is, and I need further
information from you.First, I need legible, scale drawings of the marks, preferably with
dimensions shown on the drawing. To the extent that drawings are
inadequate to show the nature of materials, finishes, print legends,
colors and the like, I will also need examples of each of Monster
Cable's actual uses of these marks in commerce; actual physical
examples would be best, but photographic reproductions might do. As you
will understand, these considerations are essential to any claim
arising out of trade dress, as you are alleging in essence that there
is a resemblance sufficient to cause confusion over the identity or
origin of the goods, and no mere line-drawing can suffice.Second, I will need copies of the trademark applications and any
correspondence between the applicant and the USPTO in support of the
applications.Third, you have not identified the Monster Cable products in
question, in actual use and distribution in commerce, whose trade dress
you allege has been appropriated. I have reviewed Monster Cable's
online materials and have examined connectors on various Monster Cable
assemblies in local retail outlets and am unable to determine which, if
any, of these are thought by Monster to represent use of these
particular marks. I am also unable to determine from this review
whether Monster Cable actually offers any product for sale to which the
Tartan connectors are alleged to be particularly similar. My own sense
of it, in looking at the connectors, has been that there is no
similarity between the Tartan connectors and any of the many Monster
Cable connectors beyond the general functional and conventional
characteristics which all or nearly all solder-cup,
mechanical-assembly, barrel-style RCA-type connectors share. It may be
that there is some line of products to which you have intended to refer
but which I have not found in Monster Cable's marketing materials or
displays; but if so, you will need to show me specifically what product
it is, and you will need to call to my attention the specific aspects
of the connector design which you contend constitute unique Monster
Cable trade dress, what the associated secondary meaning of those
aspects of the trade dress is, and in what manner and by what
characteristics you allege that this trade dress has been appropriated.Fourth, if the dimensional characteristics of the connector as used
in commerce vary from the dimensions of the scale drawing of your mark,
I will need a proper scale drawing, with dimensions, of each version of
the actual connector as used in commerce, as well as photographs of the
connectors showing actual in-use finishes. If there is more than one
such connector design in actual use by Monster Cable as to which
appropriation of trade dress is alleged, of course, I will require this
information for each and every such design.On the basis of what I have seen, both in the USPTO documents you have sent and the actual appearance
of Monster Cable connectors which I have observed in use in commerce,
it does not appear to me that Monster Cable is in a position to advance
a nonfrivolous claim for infringement of these marks. There simply is
not sufficient resemblance between the Tartan connectors and any mark
or any example of the marks' actual use that I can find to support such
a claim. But if you have further information for me on that point, you
are welcome to submit it.You have also supplied me with partial documentation on five design
patents which you claim these connectors infringe. I will begin by
observing, first, that the five design patents are so very much unlike
one another that it is very hard to imagine that any product could
actually infringe more than one of them at a time; anything close
enough to one of them to be deemed an infringement would, by that fact
alone, be too dissimilar from the other four. The dissimilarity of the
Tartan connector from each of them is readily evident.I should add that, for the purpose of this letter, I am assuming
that these patents are valid. This is in no way a concession of the
point. In fact, this is a very significant and likely inaccurate
assumption, and you should expect the patentability of these designs to
be under attack if you commence an action for infringement.The fact that you have presented me with five completely distinct
design patents, I have to say, gives me pause. I would go over them and
detail the differences between the Tartan connectors and those shown in
the patents, but if you are taking the position that it appears you are
taking, there might be very little point in discussing it with you.
Take, for example, the patent you mark as Exhibit B. The connector
shown there is substantially different from the Tartan connectors in
every respect, unless one ignores design specifics and focuses on the
core attributes of the connector which are dictated by function. If
your view of Exhibit B is that it is to be construed broadly enough as
to encompass the Tartan connector, it is very hard to imagine that
there is such a thing as a solder-assembly style RCA plug which is not
similarly, in your view, encompassed by this patent. And, needless to
say, it is very hard to imagine that any court would ever adopt such a
view of the patent's scope; if you file on this sort of basis, you are
in Rule 11 frivolous-claim territory.I will point out, though you are no doubt already well aware, that
the gross morphology of the RCA plug is pretty well dictated by
function. RCA plugs intended for soldering and assembly have certain
attributes in common; their diameter is constrained by the need for the
shell to fit over an internal set of solder points and cable clamp, and
their length by the need to provide some room for cable end prep and
attachment; they are generally radially symmetrical along the
anterior/posterior axis owing to the need to accommodate both a
round-profile cable and the round-profile RCA socket; the connector end
is constrained by the standard dimensions of the RCA socket, and by the
need, as the socket provides for no bayonet or screw attachment, to
provide sufficient tension on insertion to maintain good mechanical and
electrical contact; the barrel, grasped by the user for the purpose of
insertion and removal, requires traction which is typically provided by
raised or recessed rings, plastic inserts, knurling, or the like; and
transition between the connector and the cable to which it is attached
requires, in one form or another, a reduction in barrel size at the
connector rear. It is my assumption, since you cite design patents only
and no utility patents, that Monster Cable makes no claim here for any
functional aspect of any of these designs; if I am wrong, please let me
know what utility patents Monster Cable does hold, and what claims, if
any, Monster asserts on the basis of those utility patents.Further, on that point: one of the design patents you attached is
closely related to a utility patent applicable to the same design, and
you failed to point that fact out. I need to be able to rely upon the
completeness and accuracy of the information you send to me and I find
this sort of omission deeply disturbing because it is clear that the
effect of this nondisclosure is to obscure the real significance of the
patent features. Similarly, as I note further below, you omit reference
to another patent Monster has held which appears, frankly, to be fatal
to your position. If you expect to persuade me, you had better start
making full, open and honest disclosures; I will find out the facts
sooner or later in any event, but the impact upon your credibility will
not be repaired. It looks like when you sent this letter, you were
operating on the premise that I am not smart enough to see through your
deceptions or sophisticated enough to intelligently evaluate your
claims; shame on you. You are required, as a matter of legal ethics, to
display good faith and professional candor in your dealings with
adverse parties, and you have fallen miserably short of your ethical
responsibilities.My sense, in looking at these five patents, is that either you are
attempting to present some argument that I simply do not understand or
you are arguing for untenably broad coverage of these patents which
would sweep every functional aspect of the typical solder-assembly RCA
connector within the scope of a handful of mere design patents. You
need to clarify this, and frankly, I think you need to indicate to me
which, if any, of these patents you actually contend are relevant to
the present discussion. It cannot possibly be that you believe that
more than one of these patents is pertinent, and if you insist that
they are, we cannot have an intelligent dialogue on this subject. Once
you have identified the patent which you contend is relevant, I need to
see the file history and the references to prior art; I need copies of
the applicant's correspondence with the USPTO; and I need a clear and
cogent explanation from you as to exactly what aspects of the Tartan
connector design are alleged to constitute the infringement, and how.Additionally, if you are able to identify any of these patents as
applicable, please let me know whether Monster Cable presently sells,
or has at any time sold, any products bearing connectors which are in
conformity with the patent drawings or which are otherwise contended to
be within the coverage of the patents, and identify those products for
me. Please also provide photographs and/or physical examples of these
connectors as manufactured and sold.Also, please provide me all of the information referenced above as
it relates to your expired patent D323643, a copy of which I am
attaching. I will need to know what products Monster now offers or at
any time has offered for sale which were believed to fall within the
scope of D323643, and what claims, if any, of infringement of D323643
were made against others by Monster, whether those claims of
infringement took the form of correspondence only, litigation, or
otherwise. Please let me know which, if any, products Monster has ever
sold or offered for sale which were marked with the patent number, or
other reference, to D323643. Please also advise me whether, in your
view, the Tartan connector does or does not fall within the scope of
D323643, and if it is your view that it does not, please identify each
and every difference between the Tartan connector and the connector
represented by D323643 upon which your view is based. (On that note,
let me point out to you that the "turbine cut" feature is irrelevant
here as your client makes only functional, not design, claims for that
feature in its marketing materials for the product.) I would assume
that you would agree with me that if the Tartan connector is less
dissimilar from the D323643 patent than from any of the five patents
you cite in your letter, then the Tartan connector is within the
coverage of the prior art and cannot, as a matter of law, infringe any
of your client's current patents.I must also point out that unless there is a good deal of background
information you have not provided me which makes the case otherwise,
Monster Cable cannot possibly square its patent infringement claim(s)
with its own patent history. Two views of the matter might be taken;
the first, which is my view, is that none of the design patents,
including D323643, encompass the Tartan connector. If that is so, of
course, the claim for infringement fails. But if one grants the sort of
breadth to these patents that you appear to wish to do, a problem
arises for Monster. D323643 is the least dissimilar to the Tartan
connector of any of the patents, and stands as an obstacle to any claim
of infringement of the others because it establishes prior art; if its
scope, like the others, is granted the breadth you argue for, then the
Tartan connector falls plainly under the prior art and cannot
constitute an infringement of the later, and more dissimilar, patents.
Read the patents narrowly, and Monster loses; read them broadly, and
Monster loses. You are welcome to point out any error in my reasoning;
but I have to say that I will be unreservedly surprised if you are
successful in doing so.Please also let me know whether Monster Cable or any related entity
has brought actions to enforce any of the patents and trademarks
referenced in your letter or above, and provide me with the
jurisdiction, court and docket information pertaining thereto, along
with copies of any decisions or judgments resulting therefrom. If any
such litigation proceeded through discovery, I will need all discovery
responses, including document production, issued by Monster, as well as
copies of any and all depositions taken and the exhibits thereto.Further, if any of these patents or trademarks has been licensed to
any entity, please provide me with copies of the licensing agreements.
I assume that Monster Cable International, Ltd., in Bermuda, listed on
these patents, is an IP holding company and that Monster Cable's
principal US entity pays licensing fees to the Bermuda corporation in
order to shift income out of the United States and thereby avoid paying
United States federal income tax on those portions of its income; my
request for these licensing agreements is specifically intended to
include any licensing agreements, including those with closely related
or sham entities, within or without the Monster Cable "family," and
without regard to whether those licensing agreements are sham
transactions for tax shelter purposes only or whether they are bona
fide arm's-length transactions.Once I have received the above materials and explanations from you,
I will undertake to analyze this information and let you know whether
we are willing to accede to any of the demands made in your letter. If
my analysis shows that there is any reasonable likelihood that we have
infringed in any way any of Monster Cable's intellectual property
rights, we will of course take any and all action necessary to resolve
the situation. If I do not hear from you within the next fourteen days,
or if I do hear from you but do not receive all of the information
requested above, I will assume that you have abandoned these claims and
closed your file.As for your requests for information, or for action, directed to me:
I would remind you that it is you, not I, who are making claims; and it
is you, not I, who must substantiate those claims. You have not done so.
I have seen Monster Cable take untenable IP positions in various
different scenarios in the past, and am generally familiar with what
seems to be Monster Cable's modus operandi in these matters. I
therefore think that it is important that, before closing, I make you
aware of a few points.After graduating from the University of Pennsylvania Law School in
1985, I spent nineteen years in litigation practice, with a focus upon
federal litigation involving large damages and complex issues. My first
seven years were spent primarily on the defense side, where I developed
an intense frustration with insurance carriers who would settle
meritless claims for nuisance value when the better long-term view
would have been to fight against vexatious litigation as a matter of
principle. In plaintiffs' practice, likewise, I was always a strong
advocate of standing upon principle and taking cases all the way to
judgment, even when substantial offers of settlement were on the table.
I am "uncompromising" in the most literal sense of the word. If Monster
Cable proceeds with litigation against me I will pursue the same
merits-driven approach; I do not compromise with bullies and I would
rather spend fifty thousand dollars on defense than give you a dollar
of unmerited settlement funds. As for signing a licensing agreement for
intellectual property which I have not infringed: that will not happen,
under any circumstances, whether it makes economic sense or not.I say this because my observation has been that Monster Cable
typically operates in a hit-and-run fashion. Your client threatens
litigation, expecting the victim to panic and plead for mercy; and what
follows is a quickie negotiation session that ends with payment and a
licensing agreement. Your client then uses this collection of licensing
agreements to convince others under similar threat to accede to its
demands. Let me be clear about this: there are only two ways for you to
get anything out of me. You will either need to (1) convince me that I
have infringed, or (2) obtain a final judgment to that effect from a
court of competent jurisdiction. It may be that my inability to see the
pragmatic value of settling frivolous claims is a deep character flaw,
and I am sure a few of the insurance carriers for whom I have done work
have seen it that way; but it is how I have done business for the last
quarter-century and you are not going to change my mind. If you sue me,
the case will go to judgment, and I will hold the court's attention
upon the merits of your claims—or, to speak more precisely, the absence
of merit from your claims—from start to finish. Not only am I
unintimidated by litigation; I sometimes rather miss it.I will also point out to you that if you do choose to undertake
litigation, your "upside" is tremendously limited. If you somehow
managed, despite the formidable obstacles in your way, to obtain a
finding of infringement, and if you were successful at recovering a
large licensing fee—say, ten cents per connector—as the measure of
damages, your recovery to date would not reach four figures. On the
downside, I will advance defenses which, if successful, will
substantially undermine your future efforts to use these patents and
marks to threaten others with these types of actions; as you are of
course aware, it is easier today for your competitors to use collateral
estoppel offensively than it ever has been before. Also, there is
little doubt that making baseless claims of trade dress infringement
and design patent infringement is an improper business tactic, which
can give rise to unfair competition claims, and for a company of
Monster's size, potential antitrust violations with treble damages and
attorneys' fees.I look forward to receiving the information requested and will review it promptly as soon as it is received.
Sincerely,
Kurt Denke
