Cases

Name

Patent: David shocks Goliath

Client

WPsuspension

 

What

WP Suspension designs and manufactures technologically-advanced shock absorbers and front forks for motorcycles, including those produced by BMW and KTM. The company found world fame in the 1990s when Max Biaggi won the motor racing world championships using its shock absorbers. WPsuspension is currently developing new concepts for future suspension systems.

Whilst working on new designs, WP Suspension was confronted with an existing patent that had been awarded to bicycle manufacturer Cannondale. The patent included claims that fell outside the field of pushbikes alone, and in turn, created difficulties for WP Suspension’s design activities. The solution, was to file an opposition to avoid the risk of infringement. Yet with an opponent the size of Cannondale, the world’s largest bike manufacturer, this fight soon matched David and Goliath’s.


How

The first round of an opposition procedure is submitted in writing. In this case, WP Suspension gathered novelty destroying evidence to revoke Cannondale’s patent. Namely, an old edition of MOTO73 magazine dating from before 1998, the year the patent had been filed. It had been hiding in the attic of one of WP Suspension’s engineers and contained an article with a description and photos of the suspension system that proved the claims made by Cannondale were not new and thus not valid. As a result, Cannondale was ordered to amend its claims.

One year later, during a hearing at the European Patent Office, Cannondale managed to convince the opposition division that the amended claim was new and inventive. Remarkably though, in the amended patent, Cannondale still refused to restrict themselves to pushbikes, which would have been the easiest solution for both parties. It would have also meant that Cannondale could have kept all of its original claims and to use them for its own market. Instead, Cannondale’s reluctance proved to WP Suspension that it had been a good judge of the infringement risks involved.

The patent was subsequently amended for all validated members of the EU. A lost cause? Certainly not. The limitations on the claims now mean that the patent rights only apply to a very specific design, which WP Suspension can easily work around using its own technical expertise. And with the amendments to Cannondale’s patent, WP Suspension is now free to continue to exploit its market. In other words, mission accomplished. Goliath has been defeated and the article in the old motorbike magazine has turned out to be quite an well-aimed stone!

Patent attorney: Kees Hollaar

EP&C, Postbus 3241, 2280 GE RIJSWIJK, tel (070) 414 54 54, fax (070) 414 54 99, http://www.epc.nl