Well, the Mitchell story. Ok, if you want it, pull up a chair, you're going to be here for a whilw.
First of all, I should clear up that Silvestri Enterprises was not a part of that lawsuit. It was my company, Riggs Marketing Inc. (RMI) that originally designed the Universal.
Here's the story. Once upon a time, I ran a company called RMI. RMI was started by my mother and father. RMI started out demonstrating and selling the Foodsaver vacuum packing machine at military bases. Somewhere in his travels my dad met up with a fellow that worked for G Loomis. Loomis was about to release a golf shaft and was looking for marketing companies to sell their shafts. My dad was an avid golfer and thought this was a golden opportunity. They bought the exclusive distribution rights for all but the southernmost part of California, up to the Canadian border. We had several other products that we marketed as well. We were quite successful and had hundreds of customers. I built one of the first websites in the world for our company. In 1993 my father died and my mother ran the company for a while until turning over the reigns to me in 1994. I moved the company to Reno, NV.
It didn't take long to realize that golf was a fickle business subject to the fad of the day. I decided we needed to develop our own product line and that golf tools would be more stable in the long term. I was a mechanical engineer, how hard could it be? Our first product was the Speed Clamp. Then came the shaft extractor and then the Universal. Like our other products, the Universal came about because there were certain limitations to existing loft & lie machines. There were woods machines, iron machines, and putter machines. I thought there would be a market for a single machine that did woods, irons and putters. I was aware of all the machines out at the time and I wanted to make mine something different. I didn't see a need to re-hash what was already out there.
I knew that Ed Mitchell had a patent on his Steelclub machine, and I was aware that he used the existence of that patent to bully any newcomer from the L&L market. At least that's what I was told. Not wanting to get anywhere near his patent I was very careful to design something that didn't infringe on it. I even hired a patent attorney to look at the two machines and give me a detailed opinion as to whether the Universal infringed on the Steelclub patent. It didn't. Completely different. We decided to proceed with manufacturing.
The Universal made it's official debut at the PCS Show. It got a lot of interest, right up to the point where they made me take it off display. Mitchell went to the PCS board and demanded they make me take the Universal out, or he would sue them for facilitating the infringement of his patent. They made me take it down even though I showed them the attorney's opinion that it didn't infringe. At the time, my company was the largest single customer of the PCS. I had 4 booths in the show and a full page in every issue of their magazine. They never got another penny from me after that. Too bad because I really liked them.
At least I knew what was in store for me.
I hired a patent litigation attorney and we made a strategy for dealing with Mitchell. We knew that he would sue and that one of his favorite games was to file the suit in a location that would be very expensive to get to. Then he made you have to make court appearances as often as possible, just to drive up the expense.
The next show was the PGA Show in Orlando. I had picked up Dynacraft as a distributor and they put the Universal in their catalog. Within the first 4 hours of the show opening, Mitchell served them with a summons and sued them. He had the paperwork ready. They dropped the ULL like a rock and settled the suit. Here's the thing, we knew Mitchell was going to sue RMI, but we also knew of a legal trick to get the suite over to Reno, where my company was located. Instead of him suing me for patent infringement, I would sue him for patent
non-infringement. It's called a Declaratory Judgment. In order to pull this off my task at the PGA show was to get irrefutable evidence that we faced imminent litigation from Mitchell. Basically, if you know you're about to be sued, you can sue the other guy first. The prize was the venue.
Here's the best part of the story. I knew Mitchell was running around the show dropping summon's off wherever he could. I had no idea how I was going to get the proof I needed but I was hoping an opportunity would present itself. And so it did. I was stand in the Raven Golf booth talking to my good friend Tony Miller when Mitchell walked up to him and 'served' him right in his booth. Tony was pissed. As Mitchell turned to me I got a thought. (Imagine a smart ass voice), I said "Gee Ed, dontcha' got one of those for
me". He turned to me and said, right in front of witnesses, "You're next." We filed our suit 15 minutes later at the Federal Court in downtown Reno. My attorney literally had a courier waiting for word. The best part was, he apparently didn't have any plans to serve me at the show so he hadn't actually filed his suit. Because we were in FL, the court was closed so he wasn't able to file. Because we were on Pacific time, our court was still open.
I had the summons in hand the next morning and I hired a local cop to serve him right in his booth. Right in front of customers! He went completely ballistic over somebody actually having the audacity to serve him in his booth.
It's on!
What followed was the hardest battle I ever fought in my life. Mitchell and his lawyer fought dirty. They already knew that the Universal didn't infringe so the strategy was to drive me into the ground financially. In our strategy sessions my attorney told me this was going to take a year and a half and cost $35k. I budgeted two years and $50k. (It ended up taking six years and $300k for me. I heard Mitchell spent over $500k).
Mitchell filed his suite against RMI in FL, but was denied the pleasure of serving me at the show because all correspondence now had to go to my attorney. We avoided each other for the rest of the show. They tried desperately to have the venue changed to FL. by attacking our claim that he had no intention of suing us. Shouldn't have served Tony like ya did Ed. That sworn affidavit was all the Reno court needed to claim jurisdiction and dismiss his FL filing. We're in Reno.
The first part of a civil suit is for what's called discovery. Both sides disclose all the information about the product, business and financials of the other party. I didn't want Ed to know how much was in our bank account, but we gave them everything they requested. They gave us nothing. We had to fight for every scrap of paper. First there would be a phone call from lawyer to lawyer. They would promise to comply, then send nothing. So now comes a slew of letters demanding the discovery. We'd get a useless paper or two, but nothing really pertinent. Definitely not what we were asking for though. Then we would request a hearing. To be 'civil' the judge wanted to do it informally, in chambers, over the phone. "Oh sure Judge, we'll get the stuff right over" they said. Then we would get a few documents, completely redacted. No information visible at all. More phone calls, more empty promises, more letters, more expense to me. After months of this stalling we finally made a formal complaint. This was a full court, formal kind of thing. The judge was truly pissed off and issued an order for them to cough up the stuff or go to jail. Then we asked for our attorney's fees for the time we wasted going after what we were entitled to from the start. "Nope". Nothing. The judge said they had a legitimate right to fight, they just lost. That added $35k to my bill. However, Mitchell wasn't done. We got a letter saying we could have the documents, he just wasn't going to send them. My attorneys had to come to Dayton to get them. There went another $15k.
The next phase of the suit involved each of us petitioning the court for a Summary Judgment. We knew we would get a judgment in our favor on ty U2 loft & lie machine, but my attorney was pretty sure we'd be continuing on about the Universal. Basically, to defeat a summary judgment all you have to show the court is that you
have an argument, whether it's a good one or not. So now we're going to trial.
The games only intensified from that point. We were confident we would prevail at trial, and it was obvious that Mitchell was going to do everything possible to drag things out for as long (and costly) as possible. So now we both had to name the people who would testify, our experts, customers, etc. Then we each get to depose all the witnesses, experts, etc. More expense. Lawyers, stenographers, transcriptions, plane tickets, hotels and meals. Then we had to bring in the big gun experts. Mine was Mr. Bobby Boone. Bobby was an accomplished aerospace engineer at NASA. At one point in his career he was the engineer in charge of developing one of the space shuttles. Bobby wasn't just a big gun, he was a Howitzer.
So now we get to the trial itself. I was truly petrified. We knew we didn't infringe, but there's no telling if a jury will agree. The key was, can we teach a housewife about the mechanics of two different types of machines? We got lucky on the jury. Two of the jurors were engineers. Not mechanical, but engineers none the less. We were shocked that Mitchell's side accepted them.
Then came the trial. I thought it was fascinating. The experts testified about all the science and engineering, the guy that actually designed and patented the Steelclub testified, (we were nice to him and kept his secret. Something I'll continue doing here as well). When it came my time to testify I had a blast. Firstly, they objected strenuously to my being able to testify as an expert because I was not an engineer. The judge took a look at my work, drawings and the complexity of my design of the loft scale and ruled that I can testify as an expert because the knowledge and experience I'd accumulated over the years qualified me as a mechanical engineer. I like to think that my testimony was the death blow to Mitchell's case. Everything centered around two major differences, the loft scale and the way the loft arm was secured in place. The Steelclub uses a simple arcuate protractor with all of the degree marks equally spaced apart. The Universal uses a straight loft scale and none of the degree marks are equidistantly spaced. Calculating that scale was so complex that the company that made the CAD software I used, used that drawing in their tradeshow booth as an example of what their program was capable of. Bobby Boon testified that it would have taken his NASA engineers at least a month to do it by hand. The other thing was the was how the swingarm was held in place. On the Steelclub there is an arcuate channel with a bolt through it. You loosen the bolt with a lever and manually move the swingarm where you want it, then tighten the bolt. On the Universal, we had a screw that you had to turn to get the swingarm where you wanted it. They were trying to claim that my screw was the functional equivalent of their clamp. To demonstrate the difference I had both machines on a table in front of the jury. I showed them my screw and how there was nothing to clamp. I showed them how you could turn it with one finger, but that the screw threads always held the swingarm in position. Then I went over to the Steelclub . It stayed in place of course.said "The Universal is incapable of doing this", and I let the swingarm fall all the way to the bottom. It made a huge thud when it hit bottom. I put both machines on the ground and stepped on the Steelclub's clamped swingarm. It went right to the ground. I went to the Universal and showed them how the swingarm screw moved with my finger, and then I stood on it. It proved my point that the swingarm was clampless.
If I remember correctly, the jury deliberated for a day and a half. I was sweating bullets. My attorney's kept hammering it into me that you never know what a jury is going to do. When we got word they reached a verdict and we all assembled to hear it, I had made up my mind that no matter how it turned out, I would walk over to Ed and congratulate him on a hard fight.
There were four claims in Mitchell's patent he said we were infringing. All we had to do was have the jury say we didn't infringe on one of them and we would win. Each claim had to pass what is called a Function, Way, Means test. In other words, in order to infringe, something has to do substantially the same thing, in substantially the same way, to achieve substantially the same result. If the jury decided that I did the same thing but in a different way, it wouldn't be an infringement on that claim. So, there were twelve questions that Mitchell had to get a positive finding. If there was even one
No, we would win.
When the verdict was announced, the jury said we did
not infringe on three of the four claims in dispute.
. We all had to stand and when the Judge got done reading the verdict he dismissed the jury and everyone in the room. I went over to Mitchell and stuck out my hand, he just stomped out of the courtroom. He left his attorneys standing there. They actually apologized to us for his conduct.
Of course, the story doesn't end there. Mitchell appealed to the court and lost. Then he appealed to the court in D.C. and won the part of the case having to do with his infringing on my trademark. The jury said he die, but the Appeals court overturned that part. They left the patent infringement ruling intact though, so it was settled, the Universal didn't infringe on Mitchell's patent. The only thing left was to appeal it to the Supreme Court of the USA. We were holding our breath waiting for the deadline to pass on that. When they didn't file their appeal it was finally over. Well sorta. There were still a lot of wrangling over some technical issues between the attorneys, but I wasn't a part of that.
And now you know....the rest of the story.
Told you it was long.
Mike
