A Failure To Communicate

“There has been a failure to communicate.” In the classic movie, Cool Hand Luke, this failure resulted in the death of the character played by Paul Newman. More recently, such a failure resulted in the loss, to society, of a critically needed new product. I refer, of course, to the musical toilet. LG Home Products, LLC v. Townsend And Townsend And Crew LLP et al.

LG retained Townsend to draft a provisional patent application for its newly invented “Sound Privacy Machine And Methods Of Use Thereof.” (More on this startling invention later.) LG alleges, and Townsend denies, that the law firm was also engaged to conduct a pre-filing prior art search. Although one would expect that at least Townsend – a law firm – would know better, the agreement between the parties was ORAL.

Townsend prepared and filed the provisional patent application, which was subsequently converted to a utility application. In addition, two design patent applications and several foreign patent applications were filed.

Claiming it acted in reliance upon the (alleged) prior art search conducted by Townsend and the (again, alleged) legal advice provided by Townsend, LG made arrangements to have its invention produced in China. LG also alleged the expenditure of unspecified sums for product development, production of prototypes, production of commercials, legal fees to obtain funding for the project, and fees in seeking FCC approval of the product.

All was apparently going well until the U.S. Patent Office issued an Official Office Action in respect of the utility patent application. Alas, the majority of the pending claims were rejected, on the basis of a prior U.S. patent entitled, “Seat Apparatus For Actuating An Audio Source.”

LG saw its hopes and dreams of bringing music to bathrooms everywhere dashed. As might be expected, it sued Townsend, seeking “over $500,000 in actual damages, plus interest and lost opportunity costs of at least $250,000.” Townsend, being a law firm – albeit one which undertakes engagements based on ORAL agreements – filed an Answer denying virtually everything and including FIFTEEN affirmative defenses – in our experience, a new record. They also threw in a counterclaim for $21,824.71 in (alleged) unpaid “professional fees and costs,” plus interest.

LG responded in like kind, denying everything but raising a mere ten affirmative defenses. One of LG’s denials is of sufficient interest as to merit recitation here, “[LG admits] that [Townsend] rendered some legal services to [LG] at [LG’s] request, but denies that [LG] agreed to pay [Townsend] the reasonable value of such services.” Did LG think that Townsend worked for free?

Efforts at dreaming up affirmative defenses having seemingly exhausted both parties, they settled the case on undisclosed terms. This resolved the legal conflict, but left the world without the benefit of the musical toilet.

As part of our extensive research in preparation for writing this blog, we actually read the prior art patent which brought low the LG invention. (For the benefit of the obsessively curious, it’s US Patent No. 5,465,422.) In the Description of the Related Art, this patent makes reference to the prior “cushioned toilet seat” and the more technologically advanced “vibrating toilet seat,” neither of which, it noted, provided “any audio capability.” Also disclosed was a child’s “small toilet trainer or potty chair as they are commonly known” which played a tune when a child sat on it; “but does not provide the capability to be used on a standard toilet by an adult.”

Clearly, this invention filled a pressing need, “[a]pplicant’s invention is designed to add a dimension of comfort and relaxation to seats in a manner not previously known by providing for a seat which includes an audio device which is actuated when a person sits on the seat. Use of the invention induces relaxation, comfort, entertainment, and general pleasure.” Obviously, in these troubled times of high unemployment, a collapsed stock market, underwater real estate and a Democrat-controlled Congress and White House, the musical toilet is EXACTLY what America so desperately needs.

“[T]he invention can also be used as a means of advertising goods and services.” In these competitive times, we can’t let consumers just sit on a toilet in silence and solitude or send informative tweets to all their friends, “I’m sitting on the toilet, nothing happening at the moment.” This is an untapped market. There is business to be done! Just think of the potential sales of just one product – laxatives!

But for the unfortunate breakdown in communications, this product could have been on the market, and in your bathroom, today.

THE LESSON TO BE LEARNED: When retaining a law firm, be clear EXACTLY what they are supposed to do and GET IT IN WRITING.