Topco Wins Patent-Appeal Case Over Slippery Sex Toys

Apr 29, 2009 2:30 PM PST
WASHINGTON — In a big win for Topco Sales, a U.S. appeals court last week sided with the sex toy company in a patent case over slippery borosilicate glass.

The Federal Circuit ruled Friday that owners of Know Mind Enterprises cannot patent sex devices made of the substance and reversed judgment against Topco.

Madeira Beach, Fla.-based Know Mind sued rival Topco Sales for patent infringement in December 2006 and won in July, but the company appealed the judgment when it wasn’t satisfied with the award.

Know Mind claimed that Topco had infringed on U.S. Patent No. RE38,924, that is described as a “sexual aid ... fabricated of a generally lubricious glass-based material containing an appreciable amount of an oxide of boron to render it lubricious and resistant to heat, chemicals, electricity and bacterial absorptions.”

In the ruling that provided a rare federal court discussion about the properties and function of sex toys, the court said that Chatsworth, Calif.-based Topco wasn’t liable for poaching the design for numerous sex toys it markets.

Those Topco-branded toys that were alleged to have infringed on Know Mind’s patent included Touch Me, Triple Pleaser, Heart’s Delight, G-Spot Lover, Pink Indulgence, Petite Plug and Confetti Curve, among others.

Before Know Mind’s invention, glass sex toys were typically made out of soda-lime glass, the most common form of glass.

The ruling explained that Know Mind’s patent referred to a “slippery” device made of borosilicate glass, the kind of glass used to make Pyrex glassware.

“That glass has the properties that the patent claims for it, and one can see how those properties might enhance the utility of sexual devices made out of it,” Judge Richard Posner wrote.

“Nevertheless, though the plaintiffs’ invention is useful (setting aside any qualms that one might have about sexual devices in general), it is not patentable if it would have been ‘obvious’ ... to a person having the relevant technical skills.

“Commercial value is indeed one of the indicia of nonobviousness, because an invention that has commercial value is likely to come on the market very shortly after the idea constituting the invention (in this case, the use of borosilicate glass in a sexual device) became obvious,” he wrote.

The federal appeals court in Washington, D.C., which exclusively takes on U.S. patent-case appeals, determined that the use of borosilicate glass for existing glass products was obvious to “a person of ordinary skill in the art”

“[T]o experiment with substituting borosilicate glass for ordinary glass in a sexual device was not a venture into the unknown,” he wrote.

The judges reversed the judgment against Topco and remanded the decision and instructed the lower court to dismiss the lawsuit.

Scott Tucker, CEO and president of Topco, said that Topco's legal efforts were long and expensive.

"We are extremely gratified with the clear ruling by the three-judge appellate court," he said. "We believed this was a frivolous lawsuit from the beginning. We took a proactive stance and devoted our resources towards our defense."

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