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An exclusive
Telemarktips report....
BD Flexes Patent Muscle
Black Diamond wants
competitors making touring mode bindings to pay a licensing fee,
at least one has agreed
Clockwise from upper left:
BD's O1, the 7tm Tour, Voile's Switchback, Rottefella's aborted
Cobra Free, G3's Ascent, and the Axl, by 22 Designs.
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Story, photos
and video by Mitch Weber
November 9, 2009-- As this sort of thing will, the news got
the attention of our TelemarkTalk Forum crew like the first snap
of a good dominatrix's whip. That Black Diamond, an industry
leader with annual sales probably approaching $100 million by
now, had demanded a licensing fee from tiny Driggs Idaho-based
22 Designs, was nothing less than pure internet forum red meat:
Big Corporate Giant versus a couple of young owner/engineers
who answer the order line themselves-- when they're not out skiing
the pass.
It doesn't get any redder than that.
There is more to all of this, of
course, and while BD did a fine job in explaining
their position on our discussion board, the full story, though
more complicated and a lot less red meat-like, is an interesting
one, with implications in the ongoing battle
between BD and the four NTN partners (Rottefella/Scarpa/Garmont/Crispi)
to determine the future form of the telemark boot/binding "norm,"
that is the way we mechanically connect our boots to our skis.
BD's Claims: A Series of Recent
Patent's
Telemarktips has learned that BD's
claims of infringement, involving at least one manufacturer's
tour-mode equipped 75mm toe binding, appear to be based on language
contained in a series of separate patents awarded to BD in the
last several years, the most recent appears to be US
7401802, dated July 22, 2008. In each of these patents some
of the basic elements of every known 75mm toe touring binding,
with one important exception, are described and claimed as part
of an invention, the incarnation of which appears to be Black
Diamond's popular O1, a strong seller in recent years.
Each of the earlier patents seem
to include various additional, related claims, while the more
recent are very detailed, even in the way they describe skinning,
and the advantages of a free pivot touring mode. Most importantly,
it's the last patent that really nails everything down, apparently
expanding the scope of the claims while closing some possible
loopholes. For example, BD's December 2007 patent
(7306256) describes the specific pole-activated shifter from
uphill to downhill mode, or "switching mechanism" of
the of the O1, as we have come to know it:
"…(the) system further
comprises: a switching mechanism configured to transition the
releasable mechanism between the first and second state (uphill/downhill),
wherein a pushing force is required to switch the switching mechanism
between the first and second state and between the second and
first state, and wherein the switching mechanism is disposed
at a frontal location with respect to the toe receiving member;
and an engagement mechanism configured to engage the toe receiving
member in the second state."
That description seems to cover
BD's ultra-elegant and user-friendly O1 mode change switch very
nicely, but by July
2008 the language had changed to include other possible mode
change switch designs...
In the illustrated embodiment,
this switching force is a downward pushing force but other configurations
could be designed such that the switching force is an elevational
pulling force, a translational force, or some other similarly
aligned force.
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Another area in which the later
patent tighten things up, while again seeming to expand the scope
of the invention, is in the language related to the binding's
springs, or "biasing elements," as thay are earlier
refered to in Claim 1 of patent
number 7216888, dated May 2007
"…a biasing system
that includes at least two independent replaceable biasing elements,
wherein the biasing elements are configured to exert an increasing
biasing force against the boot as it pivots away from the ski
in the second state."
In the later July
2008 patent the spring cartridges are no longer refered to
as "at least two independent replaceable biasing elements."
The new langauage would presumably
include designs consisting of single cartridges with one or more
springs inside, as 22 Designs has done with its Axl (right).
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The Axl's single
spring cartridge, or "biasing element."
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while BD's later patents and
filings of ammendments to earlier claims may have expanded and
changed, many related claims for which it has received a patent
are still out there, and presumably infringements could still
be enforced even for designs calling for something as straightforward
as...
"… using a ski pole
to switch the Telemark ski binding into an uphill state….
using a ski pole to switch the Telemark ski binding into a downhill
state…"
That's from Claim 12 in BD's patent
number 7318597.
And while a challenger might suggest that the use of a ski pole
to change from uphill to downhill modes would seem to be an obvious
and logical progression from prior art and custom, which includes
the use of a ski pole in ways that relate to ski binding function
and usability, at this time it would appear that BD could claim
infringement by every tour mode tele binding maker based on this
alone, including Rottefella and its NTN. Speaking of which, BD's
July
2008 patent, interestingly enough, also appears to leave
the NTN door open:
"The illustrated toe receiving
member 140 is configured to match the 75 mm boot standard meaning
that it is compatible with the majority of existing Telemark
boots. However, the teachings of the present invention are consistent
with alternatively shaped toe receiving members that are capable
of accommodating other boot standards."
While we have no idea if Black Diamond
is planning to wage a patent war as part of its Battle
of the Titans with Rottefella and the NTN partners, we do
know that all of the rest of the above, and more, have in fact
been claimed by BD's lawyers as infringements by others on their
legally awarded patents, including the following, again from
7318597,
referring to the location of the invention's cable pivot points:
"… a second state corresponds
to a state in which the toe receiving member is locked with respect
to the ski and the boot is able to pivot with respect to the
ski potentially about a pivot point disposed at least 24 mm away
from the front of the boot."
And in more detail in July 2008's
US Patent 7401802:
"For downhill skiing purposes,
it is desirable to position the pivot point 172 as close to the
ball of a user's foot as possible. Conventional Telemark bindings
were forced to balance the benefits of an under ball pivot with
the inefficiencies it may produce for uphill travel. Since the
binding described herein is a multi-operational state binding,
a separate state is dedicated to uphill travel and it is not
necessary to compromise the location of the pivot point 172 .
Therefore, the pivot point 172 is disposed away from the rotation
point 170 by at least 30 mm as designated by 174 . In addition,
the pivot point 172 is disposed away from the front of a boot
by at least 24 mm. And further, the pivot point 172 is disposed
away from the pin line by at least 10 mm."
It would seem that one doesn't have
to know a lot about patents to wonder how the design elements
of active bindings could be owned by anyone with so much prior
art in the form of every cable and plate binding currently being
manufactured (again, with one important exception), both with
and without touring modes. It certainly seems like the very definition
of an 'obvious and logical progression from prior art' to take
an existing, active binding, one you have been building and selling
for years, and add a free pivot tour mode beneath it in response
to market demands. As was done with the O1, the Ascent, the Switchback
and the Axl. Oh and the defunct Cobra Free as well. But of course
I am not a patent examiner, a patent attorney, nor am I a design
engineer.
The 7tm Tour: A Picasso of Prior
Art?
For the interested, this binding
seems like it would certainly a good place to start. Although
BD's earliest-issued, O1-related patent appears to be dated May
15, 2007, the O1 actually made its
debut to the tele and backcountry ski media in December,
2005. The 7tm Tour was introduced to the world two years earlier.
A December 12, 2003 "First
Look" exclusive report here on Telemarktips included
the news that the 7tm Tour had won an ISPO 2004 Dupont BrandNew
award, and as
we found out later, earning inventor Reinhold Zoor a free
booth at the upcoming 2004 show.
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All of which would seem to indicate
that the 7tm Tour was in existence and publicly competing for
a design award sometime well prior to its curtain going up more
publicly on the Telemarktips stage.
That being said, perhaps it doesn't
matter as Black Diamond's patents seem to be written around
the 7tm Tour in key ways. BD's claims with regard to "two
independent replaceable biasing elements" (the 7tm has just
one) and two pivot points located "at least 24 mm away from
the front of the boot" come immediately to mind.
All this begs a question: Does BD
own rights to pretty much any 75mm toe, touring mode equipped
tele binding that's not a 7tm? |
How many millimeters is that
again?
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One Binding Maker's Response:
"Manufactured Under License..."
Voile apparently thought about the
hassle and distraction of fighting BD's similar claims against
its Switchback before quickly deciding to agree to a financial
settlement with their cross-town Salt Lake City neighbors. David
Grissom, Voile's General Manager confirmed to us that this year
the Switchback will be clearly labeled as "manufactured
under license"... from BD.
It's hard to say what others will
do.
In a recent phone interview, 22
Designs owners Chris and Collins explained one of their concerns,
"To even begin to contest this we would need to spend a
lot of money just to get a written expert opinion that
we are legally in the clear before going ahead with delivery
of the Axl, otherwise it could be further claimed that we "knowingly
infringed" on their patents, opening us up to even greater
liability down the line." Earlier last week the boys sounded
trapped and inclined to settle with BD, with production of the
Axl complete, assembly was underway.
Then we found out that as of Friday
afternoon, 22 Designs had hired a lawyer.
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A Chilling Development?
When contacted about this issue,
one part owner of a binding maker with an extensive and varied
backcountry gear product line, shook his head and commented off
the record, "You know, it's ridiculous. In tele bindings
we have had five separate patent dispute situations come up over
the years, with the entire rest of our line we have had just
one.
It's crazy and makes us wonder if
it's really worth the trouble. We love being involved in telemark,
it's important to us and our company, but this kind of thing
doesn't exactly encourage innovation." |
 .3 Bindings, 3
Ways? |
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I don't know
much about patent law, but it sure seems like these three
bindings accomplish the same goal in three different ways...
at least in front of the couch here at the Telemarktips.com World
Headquarters... |
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Another highly placed industry figure
put it this way, again off the record:"New ideas are precisely
what the 75mm standard is going to need to successfully fight
off the challenge from NTN. Anyone counting on the old norm to
continue to be the future of tele could be shooting itself in
the foot with this sort of thing. What's happening with the Axl
is a cautionary example. If 22 Designs says the hell with it
and decides not to go forward with their new binding, fans of
the ultra-active HammerHead who are looking for a touring mode
could end up having to look to NTN. Putting the chill on innovation
within the 75mm norm could end up hastening the old standard's
demise."
A Too Easy Narrative
It's just too easy to wrap this
whole story into a neat little Goliath versus David package.
Let's face it, for most of us, our knowledge of patent law pretty
much begins and ends with "if I invent something I can get
a patent on it." And for a reporter, reducing the complex
and unknowable to a simple tale of good versus evil is a time
tested journalistic device, a sure winner going back to that
first report of a snake having talked Eve into handing Adam an
apple. Yet could it be that this patent system of ours, basically
a database of claims and challenges, is set up in such a way
that when everyone is looking out for their own self-interest,
innovation has an ultimate opportunity to thrive?
In the short history of modern tele
there exists an example of how this may work, ironically involving
Black Diamond and yes, 22 Designs, as well as a third party,
one Mike Miller, a gear retailer in the northeastern U.S. and
one-time inventor of the Cable Track telemark binding.
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Miller's rig was actually a clever-for-its-time
cobbling together of an NNN toe piece, a Rainey Superloop front
throw and cable, combined with Miller's own cable guide
gizmo that fit into a track under the forefoot... get
it? Cable Track.
I never got to ski a pair, but I
had friends who did, and everyone told me they liked how Cable
Track skied, adding significant turning power to a otherwise
leather and lace (literally and figuratively ) NNN system. Though
I would not be able swear to it, If memory serves one of those
friends may even have been a certain, now former, Jackson Hole-based
binding maker who once supplied Miller with some of Cable Track's
components. |
An image from Mike Miller's
1997 patent
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Despite what to somebody like me
looks an awful lot like "prior art" hanging on the
walls as actual art in upscale Intrawest hotels and condos
all over the world, in September of 1997 Miller was granted a
patent
for his "ski binding (with) a cable tensioned around the
heel to a point below the toe."
It took BD less than nine months
to get its challenge to Miller's patent, in the form of a Request
for Reexamination, filed
and recorded with the U.S. Patent Office. It took three full
years for the patent office to issue a Reexamination
Certificate. In August, 2001 all of Miller's 19 claims were
canceled, effectively voiding his patent entirely. Under the
forefoot cable routing was officially up for grabs again. |
If I had some
bindings, hanging on my wall, would they be wall bindings?
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That same summer, two veteran telemark
binding designers were working hard on tele binding projects
of their own. Ted Ayliffe, formerly of G3 Targa fame, and Russell
Rainey of Rainey Designs. These two would soon officially launch
competing models of modern telemark bindings, and they would
both feature cables "tensioned around the heel to a point
below the toe." Rainey took things a step further with the
HammerHead, allowing for field movable pivot points over a wide
range of settings. These new freeheel bindings created a sensation
in the fall of 2001, and beyond. Ayliffe and his "O2"
were soon acquired by Black Diamond. The HammerHead went on to
receive near universal praise, and several editor's choice awards
for bringing new levels of power and control to telemark, as
well as for for successfully standing up to ever bigger and beefier
boots and skis. 22 Designs continues to manufacture the popular
HammerHead, royalty free to this day. After a rocky start, BD's
O2 morphed into a very popular and sturdy binding that also became
the platform for the O1, BD's best-selling tour mode telemark
binding.
There are those who would know,
and I've been reliably assured off the record by one, that it
was the performance and feature advances in 75mm tele bindings
which took place in those subsequent years that finally got Rottefella
off the dime on its then-stalled NTN. The Norwegian's hired a
new company president with a reputation for getting things done,
along with new designers and engineers, all with a goal of finally
bringing to market their hyper-innovative New Telemark Norm binding.
Perhaps a Tale of Good and Bad
After All
The good and bad of our patent system
that is. Is it likely subject to abuse? Sure. Does it seem to
work? It's hard to argue with the record of innovation achieved
under it, and that history of inventiveness shows little sign
of slowing, so the answer would seem to be, yes. And while not
as sexy and fun, nor as stirring to the passions as a tried and
true story of good versus evil, the less easy narrative seems
to show that it is a system which has proven to work specifically
to our sport's advantage as well.
Final Thoughts
More than ever Black Diamond appears
to be betting heavily on NTN to fail, and they aren't just sitting
back waiting for it to happen.
n life and in business it's always
better to get paid than it is to pay.
When BD decided to exit NTN, and
especially after it became clear Black Diamond would not have
a new, "holy-grail" (step-in, touring mode, high performance,
proprietary binding of its own sporting at least some form of
release with which to go head to head with NTN, what's happening
now became inevitable, and one of the reasons these developments
were deemed by us to be so newsworthy at the time. No, this is
not a surprise. These are good, smart people... good business
people too. They have to be, working as they do in a difficult,
niche industry, going it alone, without government sponsored
product development. Clearly, BD identified an opportunity to
be proactive in preparing for what they believe will be the eventual
outcome of this already years-old Battle
of the Titans.
Bottom line: If newly minted boot
maker BD is trying to solidify its position in 75mm bindings,
who can really blame them? Uniquely committed to telemark skiing,
they are in deeper than ever on all three major tele gear fronts.
It would seem that no one has as much riding on the sport's future,
perhaps not even the Norwegians.
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