Maker of Snakelight rival told to pay Black & Decker But court lets Grip Light remain on the market


June 07, 1996|By Sean Somerville | Sean Somerville,SUN STAFF

Black & Decker's "Snakelight" will continue to face competition from a Hong Kong company's "flexible flashlight" after a federal jury ruled that the rival wasn't similar enough to the Towson company's product to block sales.

But the federal jury in Virginia on Wednesday also ordered the company, GSL Engineering Ltd., to pay Black & Decker $2.17 million because its "Grip Light" design infringed on a patent for Snakelight.

Both sides in the case claimed victory.

GSL President and Chief Executive Officer George R. Milman called the jury's ruling an "unqualified victory."

"It means that we'll be in the marketplace," he said. "Black & Decker will have to deal with competition in the flexible flashlight market."

Raymond Niro, a Chicago-based patent attorney for Black & Decker, said he was "ecstatic" about the outcome. He said the patent infringement award shows that copying Black & Decker products comes with a steep price. "This is a substantial and significant victory that will create some respect for patent rights," he said.

For Wall Street, the ruling did not appear to be significant. Michael Mead, an analyst with Legg Mason Wood Walker Inc., said he would have to talk with Black & Decker officials before determining the effect of the ruling. Black & Decker shares declined 12.5 cents yesterday, to $41.125.

Black & Decker has sued several manufacturers and importers marketing flashlights similar to Snakelight -- a huge hit with consumers since its introduction in November 1994 and the best-selling product in the company's history.

At issue in the suits is Black & Decker's patented ball and socket design for the Snakelight, a light attached to a pliable tube that can be twisted and secured to poles and other items. The company also has claimed in the suits "trade dress" infringement, a term meaning the overall image of the products has been illegally borrowed.

Black & Decker has another, pending case against GSL involving three additional patents. The company is also suing two other competitors -- Universal Security Instruments Inc. of Owings Mills and Coleman Equipment Co. -- alleging that each violated three patents with their flexible flashlights, Niro said.

GSL seized on the ruling of the jury in U.S. District Court for the Eastern District of Virginia that Grip Light did not constitute a "trade dress" infringement. The availability of Grip Light at department and hardware stores "is a great victory for consumers," said Larry P. Sloven, GSL chairman.

But Niro said Black & Decker's loss on the "trade dress" issue had little consequence. He said the claim that another product should be barred because it resembles yours is a "throw-away" argument -- with potential for success but no downside.

The real way to protect products is with patents, he said. "We have a patent and they infringed on that patent." As a result, Niro said, GSL was forced to pay Black & Decker $13.60 for each of approximately 160,000 flashlights with Snakelight's design that it sold. "That's 70 percent of the retail price," he said.

GSL said it marketed those 160,000 flashlights before Black & Decker's patent was issued and that it changed design the day after the patent was issued. GSL said it would appeal the award.

"GSL believes that the ruling is directly contrary to established law," Milman said. "I'm confident that the appellate court will agree."

Regardless of what happens next, Niro said, the patent worked. GSL was forced to change its design, and the quality of the product suffered, he said. "The patent does its job if it forces someone to make a product that's deficient," he said.

But GSL argued that its Grip Light, sold at stores such as Sears, is a superior product.

Niro said the ruling holds significance for future cases.

"I think it has the potential for deterrence," he said. "It creates in the mind of the infringer the possibility of paying more than what the profits are."

Pub Date: 6/07/96

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