Just last month, Procter and Gamble’s (P&G) major razor powerhouse, Gillette, known for its popular razors and male grooming products, filed a lawsuit in federal court in Delaware against online competitor Dollar Shave Club (DSC). Gillette argues that DSC infringed on its 2004 patent for “razor blade technology,” particularly with regard to its claims involving razor blades covered with “chromium-containing material.”[1] This chromium coating helps keep the razor blades sharp.[2]
Though Michael Dubin and Mark Levine founded DSC in 2012 and have successfully competed against Gillette and other major male grooming product companies since then, the possible infringement by DSC did not come to light for Gillette until last year. According to P&G’s spokesperson, Damon Jones, Gillette customarily conducts routine market surveillances in which the company performs tests on similar goods of its competitors.[3] According to Gillette, the tests revealed that DSC products known as “The Humble Twin,” “The 4X” and “The Executive,” in particular, infringe on its 2004 patent.[4]
A key takeaway, for an inventor, is that it is important to anticipate how detectable elements of his or her invention, may be in the real world. While P&G may have readily detected the presence in the marketplace of an infringing three-bladed razor (see, e.g., U.S. Patent No. 6,212,777), it is possible that only DSC’s success in the marketplace prompted P&G to investigate whether DSC products infringed any P&G patents, e.g., to test whether the coating was “chromium containing material.” When disclosing an invention to Northeastern University, it is helpful to include a description of the most detectable elements of the invention and how they may be detected. Detectable claims in a patent, which facilitate identification of infringement, increase the value of a commercially viable patented invention in the eyes of a potential licensee.
One question in the Gillette lawsuit is why Dorco, the South Korean maker of DSC’s razors, isn’t included in the suit. According to Re/Code magazine, Jones states the reason Dorco is not mentioned in the lawsuit is because DSC, and not Dorco, is “actually selling the product and bringing it to market.”[5] United States patent law does consider infringement to include the unauthorized making of a patented invention, but does limit it to “within the United States.” Since the manufacturer is in South Korea, it would be outside of the scope of this case.[6]One difficulty faced by patent holders such as Northeastern is the decision to file in only a single jurisdiction, e.g., in the U.S where a majority of patented products might be sold, as opposed to multiple jurisdictions, e.g. in the U.S. and in China as well where the products may be manufactured. The analysis should balance cost against the value of the patent asset in each contemplated jurisdiction. Factors to consider include the historical effectiveness of patent litigation in the jurisdiction, the likely return in the event of success, and the type and size of likely infringers in the jurisdiction.
Gillette is seeking both monetary damages and a court order to cease DSC’s ability to sell the allegedly infringing razors.[7]
Sources:
U.S. Patent No. 6,684,513 (filed Feb. 29, 2000)
The Associated Press, Ouch! Gillette suing Dollar Shave Club for Patent Infringement, CNBC (Jan. 15, 2016, 11:59 AM),
Jason Del Rey, Gillette Sues Dollar Shave Club for Patent Infringement, re/code (Jan. 15, 2016, 11:42 AM),
Chris Isodore, Gillette Sues Dollar Shave Club: You Stole Our Patent, CNN Money (Dec. 18, 2015, 10:47 AM),
35 USC § 271(a).
[1] U.S. Patent No. 6,684,513 (filed Feb. 29, 2000);[2] Chris Isodore, Gillette Sues Dollar Shave Club: You Stole Our Patent, CNN Money (Dec. 18, 2015, 10:47 AM);[3] Jason Del Rey, Gillette Sues Dollar Shave Club for Patent Infringement, re/code (Jan. 15, 2016, 11:42 AM);[4] The Associated Press, Ouch! Gillette suing Dollar Shave Club for Patent Infringement, CNBC (Jan. 15, 2016, 11:59 AM);[5] Id.;[6] 35 USC § 271(a);[7] Jason Del Rey, Gillette Sues Dollar Shave Club for Patent Infringement, re/code (Jan. 15, 2016, 11:42 AM)