SP Suit FAQ:

by

[Updated 7-23-03. Thanks to Hopalong for the additional info!]

Okay, what's going on?

-Smart Parts, maker of the Shocker and Impulse paintball guns, is currently suing Indian Creek Designs (makers of the Bushmaster and BKO) for Patent Infringement.

What patent are they supposedly infringing?

-SP has five patents, This One is probably the key one. Read claim 7, maybe claim 8. The rest are here, here, here, and here.

What do you mean "expanded"?

-They added to the patent, to cover a broader area, to cover more than just what the original patent was intended for. Instead of simply patenting the Shocker itself, as the original patent was filed for, the expansion now allows them to make the claim that it covers any paintball gun that uses electricity, a switch (for power or the trigger) and/or a solenoid to fire a paintball.

How can someone expand a Patent?

-There are things in the patent world known as Continuations and Continuations-in-Part (CiPs). They both use a previously filed patent application that is still pending to get a better priority date. This previously filed case is called the parent, and the continuations and CiPs are called children.

How do Continuations work?

-A continuation is typically filed when the inventor wants to further define the material in the parent case. The continuation cannot add new material to the patent.

Continuations are often filed when the parent is too broad to get a patent, but does contain to a patentable invention. The continuation further defines the inventions in order to get allowed. There are other "uses" for continuations, but this is the main one. The other benefit is that anything disclosed in the interim does not count as prior art because the continuation has an effective filing date that is the same as the parent.

How do Continuations-in-Part work?

-Just like continuations, except that new material is added. The CiP gets priority just like a continuation, but not on the new material. This is a very important distinction: even though the effective filing date on the patent may be one date, the effective filing date on any newly added material has a later filing date.

Are there any other ways?

-Yes. Divisions, Re-Exams, and Re-Issues. However, I don't think that they are relevant for the current issue (and I don't know enough about them to pontificate accurately)

How can SP take advantage of this system?

-SP files a patent in '96. The original patent never issues, but they file continuations and/or CiPs on the parent. In the mean-time, they build their markers and allow others to do the same. At the time, nobody else realizes that they're infringing on a patent because until recently, pending applications were confidential (this is no longer the case). So, they continue this process for a while until a big enough market exists, and then they finally allow one of their patents to issue. Now, they have a whole market that is infringing on their patents that they can sue. Sneaky, no?

What can be done to stop them?

-Depends. If the "expansion" to their patent was added in a CiP, then the effective date for those parts of the invention is later than the filing date for the parent, and SP has no case. In fact, if this comes out in the suit, it could invalidate parts of SP's patents. (Wouldn't that be ironic)

If the "expansion" to their patent is a new court intrepretation, not much shy of invalidating SPs patents. The courts have the deciding factor as to the intrepration of a patent despite the fact that they are supposed to be as clean-cut as possible.

In a way, broadening their patent may work against them. The best way to stop SP would be to invalidate their patent. Now that their patent is apparently much more broad, it should be easier to find prior art. If this prior art were to come out in court, it could tip the balance.

So what's all that mean?

-So that means Smart Parts has essentially patented electronic paintball guns. Period, end of conversation.

You said a switch. How about we use a button, not a switch? What about the E-Mag? It uses a little yellow pin. Or the LCD's "key"?

-Won't work. The 'switch' part can mean either the power switch (turning the gun on and off) and/or the trigger switch (used to fire the marker.) The definition of a "switch" is something designed to make or break an electrical connection; a button, key or pin is just a different kind of switch.

Besides which, the patent as interpreted now, includes the very idea of using electricity to fire the gun. It also can cover the use of solenoids, and a solenoid can be interpreted as either a mechanical solenoid, like used to actuate the sear in an E-Mag/X-Mag or Black Dragun, or an air valve solenoid, as used in Bushmasters, Intimidators, Angels, E-Blades or Matrixes.

Can they do that?

-Technically, yes. The individual parts are not patentable, but the assembled parts, when used for a specific purpose, ARE patentable. It's like, say, a GeForce video card: The individual components used to make the board are not patentable (or have been patented by others) but when they're all assembled into a working card, the entire card as an assembly is indeed patentable.

SP cannot patent a battery, they cannot patent a switch. They cannot patent electricity. But they CAN patent the use of a circuit board controlled by a battery, activated by a switch, which runs a solenoid, and used to fire a paintball gun.

Isn't that extremely broad?

-Yes. The original patent was for the Shocker electropneumatic paintball gun, among the first production electros. However, the recent expansion of that patent broadend it out to include any electropneumatic paintball launching device.

So what does that mean?

-If the suit goes through, SP will have precedence; in other words, official, court-mandated acknowledgement that ICD's markers were indeed infringing on the patent.

So ICD will have to pay off SP?

-More than that. Chances are SP will demand royalties on all electronic ICD products made to date. That would include all semiauto Bushmasters, all Defiants (made for Bob Long by ICD) and all BKOs.

That doesn't sound so bad.

-Doesn't it? What if SP asks $100 per marker made? There's no limit to what SP could demand, if the courts side with them. How many guns has ICD made, 20,000? If SP only asks $50 a gun, that's a million dollars that ICD would have to cough up. How many Defiants did they make? 10,000? There's another half-million. BKOs? They've been selling well, but they're pretty recent, call it between 2,000 and 7,000. There's another hundred to three hundred and fifty thousand.

Meaning ICD might have to come up with nearly two million dollars to pay for guns they've already made.

Okay, that's pretty steep, but it's not the end of the world. Another $50 per gun isn't too bad.

-That assumes ICD can afford two million, and that assumes SP will only ask $50. There's no reason they couldn't demand $75, or $100, or $200 per gun.

Oh come on, it wouldn't go that high.

-Why not? Put it this way; the Bushmaster is a direct competitor to the Impulse, in price and performance. SP can claim that each Bushmaster sold equals a lost sale of an Impulse. Let's say that SP makes a $100 to $200 profit on each Impy, which is not unlikely, and through the courts can see that ICD sold 20,000 Bushies. $100 multiplied by twenty thou is two million dollars.

On top of that, the current rumor floating around says SP might ask $1 million for the license to produce electronic markers. So in our SWAG example, ICD might have to come up with $2 million to pay for guns they already made, plus another $1 million to buy the rights to continue making Bushies and BKOs.

They can't afford that?

-I doubt it. Contrary to popular belief, not many of these paintball manufacturers make a couple of million a year. Several might have sales around a couple mill each year, but after payroll, utilities, advertising and other costs, the profit margin is considerably lower than that.

Yes, they're making money, but even Tom Kaye or Bud Orr couldn't pull $3 million out of the bank to pay the fees. It's very likely it would absolutely break ICD and they'd go bankrupt.

Is it really that bad?

Yes and no. The recent event was that a judge approved SP's right to sue ICD over the infringement. We don't know what's happening, we won't know how it'll turn out until it's over.

Why are they just suing ICD? What about Bob Long, WDP and Kingman?

-Very good question. First off, SP has sued WDP, twice, in fact. Once in '97 and again in November of '02. We're not yet sure what those are/were for, but we're looking into it.

Second, Kingman, like WDP, isn't an American company. It's somewhat easier to file suit against an English company than a Taiwanese company.

There's speculation that ICD was "first on the list" due to the fact Jerry Dobbins, the owner, has been ill and unable to help run the business on a day-to-day basis. Go after the weak ones first, in other words, and get the precedent set. Then go after the ones with money- like WDP.

Will WDP and Kingman be affected, if they're not US companies?

-Not directly, but they would when they try and import a marker that falls under the SP patent into the US. In other words, they could sell them with no difficulties in England, but if they tried to import Angels to the US, they'd be legally subject to the licensing fee.

So what happens if ICD loses?

-SP then systematically goes around threatening the makers of other electros and demanding their past royalties, their licensing fees and setting up to accept royalties from future production.

AGD would have to pay for all the E-Mags and X-Mags made to date, W'Orr would probably have to pay for any and all W'OrrBlades, Bob Long would have to pay for all the Intimidators. Kingman would have to cover the E-Spyders (and they've sold tens of thousands) and so on.

Didn't SP already "threaten" E-marker manufacturers?

-Apparently yes. We're told that SP contacted all the major electro manufacturers about two years ago, and offered them licensing terms. They were, naturally, uniformly declined since the patent, at the time, was not broad enough (the expansion hadn't been filed or hadn't completed the process) and really only covered the actual markers- the Shocker mainly, and later the Impulse.

And since electros like, say, the Automag, operate wholly different from either of them, there was absolutely no reason to pay royalties on an noninfringing design.

There's been speculation that the rumored $1 million licensing fee and $75 per gun royalty are therefore "punitive"- as in 'you could have taken our offer then, now you're going to pay for it.'

Is that all?

-That's not enough? We're talking tens of millions of dollars from companies that probably cannot afford it. Those fees will result in higher costs to you and me, the average consumer.

What? How?

-Increased costs of production are always passed on to the consumer. If AGD has to pay another $100 per gun to make the X-Mag, and has to recoup their million-dollar license fee, they will pay it by raising the cost of the gun by the same amount.

In other words, the cost of every electro out there, from the $300 Black Dragun to the $1,900 Dragon Intimidator will cost more, guaranteed.

What about the Impulse and Shocker?

-Good question. SP will have the power to force other makers to raise their prices, so SP could, theoretically, leave the prices on their line alone, or even drop them slightly- they'll be awash in cash, after all- meaning you might have a choice between a $800 Bushmaster or a $450 Impulse.

However, with SP's monopoly, they could raise prices on theirs as well. Instead of that $800 Bushy, you might have to go for a $750 Impulse.

What's wrong with that?

-If you like the Impulse or Shocker, that's fine. Also assuming you don't mind paying more. But it's well established that both markers are no longer- if they ever were- "top of the line". The Shocker is overly bulky and has horrible gas efficiency, combined with a relatively slow rate of fire. The Impulse all but requires the addition of an LPR in order to be tournament-ready, and there's some common, known problems with threads stripping out of the body due to the use of lower grade aluminum.

Also, it will have the effect of severely restricting the development of new markers. It already costs a bloody fortune to design and manufacture a new gun, but it can be done for under half a million. Now triple that- in addition to half a mill in development, you have to pay another million in licensing just to be allowed to produce it.

It's hard enough as it is to bring something to market without massive additional costs like that.

What about existing guns? We going to have to turn them in?

-Oh no. Anything already sold or already "in the pipeline" is fine. If you already have a Bushy or a Timmy or a Dragun, you won't pay anything more, nobody's gonna take it away, they won't become "illegal" or anything of that nature.

It will only affect later production (and the companies that have to pay retroactive royalties.)

The one upside is that resale values of used markers will increase. The downside is that the cost of new markers will ALSO increase.

So they're not going to ban electros or anything, right?

-Of course not. The suit has nothing to do with the use or sales of the markers. It only has to do with one manufacturer supposedly producing a line of paintball guns that may or may not infringe on the patent of another manufacturer.

Even if SP wins and ICD goes bankrupt, there's still literally millions of electros already out there in peoples' hands and on store shelves that will be totally unaffected. Buy 'em, sell 'em, trade 'em, shoot 'em. No worries there.

What about conversions? Like the RaceGun or E-Blade kits for 'Cockers?

-Good question. No one knows. It's likely that'll be a gray area. It's possible that the kits won't be affected, but any mass-produced completed guns will. Meaning you'll probably be able to get E-Blade kits, and you'll certainly be able to get 'Cockers (being wholly unaffected by the suit) but you won't be able to buy prebuilt W'OrrBlades, for example.

Isn't one of the people at Smart Parts a patent attorney?

-Yes. According to this document from the FTC, two individuals currently associated with Smart Parts were involved in an "invention submission" business, which the Federal Trade Commission shut down for "deceptive practices".

What's "prior art"?

-Prior art means a patent application or document referenced in a patent, that deals with the subject OF the patent. Meaning if somebody patented the sandwich in 1985, and then somebody tried to patent a "method for holding meat between two slices of bread" in 1990, the sandwich patent would either invalidate the later patent, or would have to be referenced as to how the later patent is different from the prior one.

Is there "prior art" for the SP patent?

-Maybe. There's a 1971 Patent by the US Navy for an electric, air-powered device for launching "dye filled balls" for training purposes. If this patent is still valid- and it may not be- it would be "prior art" for the SP patents. Interestingly enough, SP's documents mention this patent, so it's entirely possible it's not valid for whatever reason.

There's an E-mail going around, supposedly from SP, that says the suit is over some supersecret feed system that ICD was supposed to be developing.

-Near as can be determined, that E-mail wasn't an "official" public press release. None of SP's patents cover a "feed system", and it seems odd that SP would be suing over a system nobody's seen or heard of and hasn't been produced.

There's speculation that the bosses at SP are keeping the rank-and-file employees in the dark as to the true nature of the suit, which is logical since one doesn't want the wrong info to reach the wrong person in a legal battle.

So what should I do?

-A good question. Personally, I plan to stop buying any Smart Parts product, and I'll be actively recommending that others do the same.

(Corrections and/or updates to any of the above are welcome.)

Doc.



    
This message has been edited by DocsMachine on Jul 24, 2003 8:12 PM
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Posted on Jul 22, 2003, 10:37 PM

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Responses

  1. A couple of points.. manike, Jul 23, 2003
    1. All the SP gun patents. manike, Jul 23, 2003
    2. If the info on the Navy's patent is now public domain, .... Timmee, Jul 23, 2003
      1. Microsoft, on a lower level. smoking joe, Jul 24, 2003
    3. SP's new markers with profit. , Aug 3, 2003
  2. Thanks Doc. SHAG, Jul 23, 2003
  3. I guess the part I do not understand is............ Izzy, Jul 23, 2003
    1. a couple of things.... , Jul 23, 2003
  4. A stupid question from a dumb Pollack........ , Jul 23, 2003
    1. The problem is..... HP_Lovecraft, Jul 23, 2003
      1. Well ..... B, Jul 23, 2003
    2. One big difference with real firearms. Hans, Jul 23, 2003
  5. I am willing to bet..... scared_of_SP, Jul 23, 2003
  6. Can't Smart Parts Sue T-Shirt guns and the like.. TF, Jul 23, 2003
    1. Those aren't electro. NT. , Jul 23, 2003
      1. Oh?. The Inflicted, Jul 23, 2003
        1. I guess they upgraded!. , Jul 23, 2003
          1. too bad we dont shoot paintball guns. Spaceman!, Jul 23, 2003
          2. Does it really say "Paintball gun" in the patent?. Adam, Nov 26, 2003
  7. If SP's suit goes through, .... Timmee, Jul 23, 2003
  8. Actually, I think this is the patent of note:. , Jul 23, 2003
    1. Hmmm.... , Jul 23, 2003
      1. Nope.... , Jul 23, 2003
        1. Right. , Jul 23, 2003
          1. Ah, sharp eyes - I should have read all the way..... , Jul 23, 2003
            1. Now.... , Jul 23, 2003
              1. Well, the SuperNova ET is already in the clear.... , Jul 23, 2003
                1. But.... manike, Jul 23, 2003
                  1. Hm... Shytkicker, Apr 7, 2004
              2. The Alien. , Jul 23, 2003
                1. Heck, I'll sell electro-splatmasters..... HP_Lovecraft, Jul 23, 2003
                  1. You have to be careful.... , Jul 23, 2003
            2. Remeber the Shocker. Chubie, Jul 23, 2003
        2. Check their pending patents also. Have blue you have mail (nt). Aaron (aka), Jul 23, 2003
          1. Post them up!. , Jul 23, 2003
            1. Here ya go.... , Jul 23, 2003
              1. ain't that just a.... DK1, Jul 23, 2003
                1. The best part is who patented it.. Aaron (aka), Jul 23, 2003
                  1. lol! (nt). , Jul 23, 2003
                  2. hehe, oh.... DK1, Jul 24, 2003
  9. Sp. Need to stay anomonous, Jul 23, 2003
    1. THIS IS BULL. , Jul 23, 2003
  10. No SP Gear in DPB 2.2. , Jul 23, 2003
    1. if I might make a small request. . .. , Jul 23, 2003
      1. Not too sure.. , Jul 23, 2003
      2. Enjoying the land of wind and clean air Ken?. DeeEight, Jul 24, 2003
        1. in the land of angry bovines. . .. , Jul 25, 2003
  11. What's holding them back?. , Jul 23, 2003
    1. SHHHHHH! DOn't give them ideas!. HP_Lovecraft, Jul 23, 2003
    2. alot actually. , Jul 29, 2003
  12. May not be a good thing, but.... 70sSanO, Jul 23, 2003
  13. CANADA EH. Shocker.T3, Jul 23, 2003
    1. thats not a bad idea.... adam, Jul 24, 2003
    2. that may be illegal. Ryan, Mar 18, 2004
  14. Good points BUT!. , Jul 23, 2003
    1. Not Microsoft, Rambus. JD, Jul 24, 2003
  15. Ban Smart parts!!!!!!!!!. Chris Rheinecker, Jul 23, 2003
  16. WELL DONE DOC. , Jul 24, 2003
  17. There is a tv/movie industry electropneumatic gun.... DeeEight, Jul 24, 2003
    1. doesnt matter. , Jul 29, 2003
  18. boycott smart parts. , Jul 26, 2003
  19. Solution to SP's patent for Electro PB guns. , Jul 27, 2003
    1. wow. , Nov 2, 2003
  20. Re: SP Suit FAQ:. , Jul 28, 2003
    1. lol!!. Jon Alley, Aug 6, 2003
  21. umm, i dont think so on the worr games. , Jul 29, 2003
  22. I called SP. , Aug 5, 2003
  23. What a Bunch of Greedy Good-For-Nothings. , Aug 13, 2003
  24. this may explain a few things. , Aug 14, 2003
    1. also. , Aug 14, 2003
      1. Right . . .. Raptor, Mar 19, 2004
    2. I will hold you to your word. Anonymous, Feb 29, 2004
  25. Any other "prior art" out there besides the Navy patent. , Aug 20, 2003
    1. Re: Any other &quote;prior art&quote; out there besides the Navy patent. matt, Aug 22, 2003
  26. THE HELL WITH SMARTPARTS. , Aug 30, 2003
  27. Now that National and Dye have signed the "Patent License Agreement" how do things look. , Sep 8, 2003
    1. my thoughts. , Sep 19, 2003
  28. an idea.... Murray, Sep 9, 2003
  29. Noidless Markers. , Sep 20, 2003
    1. i agree. PrettyPistol, Nov 1, 2003
  30. This is BULL. , Sep 23, 2003
  31. Ha Ha ha. bob long, Sep 25, 2003
    1. your stupid. rancidpboi, Sep 25, 2003
    2. RE: Ha Ha ha. , May 26, 2004
  32. Im not sure if someone has mentioned this yet?. , Sep 27, 2003
  33. here few things that may kill smart parts.. , Oct 6, 2003
  34. Re: SP Suit FAQ:. ryan, Nov 7, 2003
    1. Practice what you preach!. DJM, May 28, 2004
  35. SP will burn. blu, Jan 11, 2004
  36. prior art isn't the only way to remove a patent. Robert, Feb 14, 2004
    1. goodbye frying pan, hello fire.. , Feb 28, 2004
  37. Antitrust?. , Feb 29, 2004
    1. Antitrust. Eyecare, Mar 12, 2004
      1. No antitrust here. abom, Mar 16, 2004
      2. antitrust resonse. Nick, Jul 19, 2004
  38. prior art. KFarris, Mar 1, 2004
    1. Prior Art?. , Apr 7, 2004
  39. Good bye AKA http://www.petitiononline.com/banSP/petition.html. Anonymous, Mar 2, 2004
  40. your wrong about sp making icd pay for previous guns. , Mar 3, 2004
  41. Youre wrong Ryan. Jason Daniello, Mar 19, 2004
    1. this has to be wrong. ilia nikiforov, Oct 19, 2004
  42. smart parts boycott. , Apr 28, 2004
  43. SCO=Smart Parts.. , May 21, 2004
  44. patent. , Jul 10, 2004

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