“Learning Intellectual Property Lessons from the Battle of the Cookie Brands: An IP Fable”

The Tale of Ernie the Elf and the Battle for the Resealable Packaging Patent

In the realm of intellectual property, the story of an elf named Ernie and his battle with a group of sailors known as Chips Ahoy! over a resealable packaging patent serves as a valuable lesson for businesses. Patent expert and storyteller, William Honaker, unravels this modern-day fable to teach us the importance of understanding and navigating patent disputes.

The Dispute Over the Resealable Packaging Patent

Ernie, a resident of the land of Keebler, was renowned for his delicious cookies. To keep his cookies fresh, he used a resealable package. However, his competitors, Chips Ahoy!, claimed that they had invented the resealable package and held a patent for it. They accused Ernie of stealing their intellectual property.

Ernie refuted these accusations, arguing that the resealable package was a simple and obvious idea, unworthy of a patent. He pointed out that the reseal technology used by Chips Ahoy! had been used on packages containing items like moist wipes for years. All Chips Ahoy! had done, according to Ernie, was to combine the two, and they had a patent.

The Battle for the Patent

Ernie’s argument was not new. Chips Ahoy!’s patent had been challenged previously, and the challenger argued that the patent should not have been issued. This re-examination proceeding saw an examiner at the Patent and Trademark Office (PTO) agreeing with the challenger, only to be reversed by his board. This reversal must have bolstered Chips Ahoy!’s confidence in their patent, but Ernie was not deterred.

Ernie’s Defense Strategy

Ernie’s response to this patent dispute serves as a lesson for any company launching a new product. Patent litigation can be expensive and potentially business-threatening. Ernie partnered with a patent lawyer and together they devised a defense strategy that included understanding the competition, checking the patent status, understanding the patent issues, looking for similar “innovations,” and ensuring not to copy the disputed package.

The Verdict

Ernie’s defense strategy proved successful. The judge ruled that the “invention” that Chips Ahoy! had been arguing was so special and unique, using the known re-seal flow wrap to wrap a cookie tray, was too obvious to be patentable. The judge invalidated the patent, and Ernie and the rest of the elves returned to their work in the land of Keebler, victorious.

The Moral of the Story

The moral of this IP fable is clear: if you are launching a product, do your research. Avoid surprises. And if you don’t have a patent attorney in your hollow tree, check the nearby woods, there are some really good ones hiding in those trees, ready to help you find the patent-killing sword and shield to make that patent problem vanish.

About William Honaker

William Honaker is the Intellectual Property Practice Group manager at Dickinson Wright PLLC, in Troy, MI. He has 30 years of intellectual property experience evaluating patents, trademarks and copyrights, along with advising clients on the protection of inventions, trademarks and copyrightable subject matter, with a focus on helping clients avoid unnecessary litigation. Dickinson Wright’s IP practice boasts more than 50 lawyers across 12 offices in the U.S. and Canada.

3 IP Steps for Launching a New Product

1. Check to see if there are any patents that may be of concern.

2. Determine if your product infringes on the patent claims.

3. Determine the scope of the patent claims and if you can modify your product to avoid claimed elements.