Maker of Popular Ab Machine Flexes Some Courtroom Muscle
By KATHRYN KRANHOLD
Staff Reporter of THE WALL STREET JOURNAL
LOS ANGELES -- The inventors of an abdominal-tightening machine are flexing their muscles in federal court here. And if they're successful, a number of rival companies selling similar products may soon find themselves operating under different terms -- or forced out of the market altogether. Many of these enterprises are based in California.
In recent weeks, a half-dozen companies accused of infringing on the patent for the AB Trainer have decided to settle with the company that holds that patent -- Precise Exercise Equipment Inc. of Chester, N.J. Precise sells its machine through a licensing agreement with Los Angeles-based Kent & Spiegel Direct Inc.
Still, even after the flurry of settlements, which called for the competitors to pay royalties to Precise, seven lawsuits brought by Precise remain pending in U.S. District Court here. In them, Precise claims that various competitors have violated its February 1996 patent for the AB Trainer. Precise was granted a second, broader patent in November 1996.
Sit Up and Notice
The most important of these cases is one involving Venture Aerobic Productions Inc., based in Winter Garden, Fla., and National Media Corp., based in Philadelphia. District Judge Richard Paez is expected to rule at the end of the month on a motion by Precise to bar the two companies from manufacturing and selling the Ab Roller Plus -- a machine that Precise claims is an unlawful knockoff of its AB Trainer.
"It will send messages one way or another with the ruling," says Andrew Hall, a Los Angeles lawyer who represents NBG International Inc., a Pomona-based ab-machine company that is also still battling with Precise in court. It will give the "gestalt of where the case is going."
In all, Precise lawyers estimate that more than eight million ab-tightening machines of different sorts were sold last year -- making it possibly the hottest-selling fitness item of all time.
The AB Trainer -- which commands about 10% of the market, according to Precise -- was the brainchild of Donald Brown, now the company's president. The curved, tubular device has a cushioned headrest and handlebars for a user to hold while rocking back and forth doing stomach crunches. The design is supposed to provide support for a user's head and neck while isolating the abdominal muscles and helping to build a washboard stomach.
Mr. Brown says that after he invented the machine four years ago, he and partner Bob Hanington began selling it a short time later through health magazines, at trade shows and, ultimately, in an infomercial through Kent & Spiegel. The AB Trainer sells for between $39 and $79, depending on the model.
"Don was the first guy, he was the one who had the lightning bolt," says Alan Morelli, a lawyer who owns one-third of Precise Exercise. Mr. Morelli is a partner with Los Angeles-based Manatt, Phelps & Phillips, which is representing Precise in court.
The First Set?
But at the heart of Judge Paez's decision will be whether to believe -- as Venture Aerobic and National Media claim -- that a similar ab machine was invented in Asia even before Mr. Brown came up with the AB Trainer.
The companies argue that a man named Bruce Anthony brought the Asian machine into the U.S. in the summer of 1993. Yet they acknowledge that it wasn't until last fall that this other device -- known as the Ab Rocket -- first surfaced.
As Venture Aerobic tells it, Mr. Anthony took the device to a trade show in Chicago several years ago. But "the few people who had looked at it thought it was uninteresting," Arthur Newbold, the company's attorney, told the court during a hearing earlier this month. "So he put it in a box and put it in storage with other stuff."
Eventually, after a series of jobs, Mr. Anthony found his way to NBG International. It was then, according to Venture Aerobic, that he took the Ab Rocket out of storage and showed it to his new employer.
If Judge Paez finds the story about Mr. Anthony credible, then Venture Aerobic and National Media could survive the preliminary injunction that Precise is seeking. That's because under the law, a patent may be considered invalid if there has been "prior art," or a previous invention that is essentially the same.
Passing the Smell Test
But the scenario laid out by Venture Aerobic about Mr. Anthony and the Ab Rocket "simply doesn't pass the smell test," Precise's attorney, Thomas McDermott, countered during the hearing. And even Judge Paez told the parties that he finds Mr. Anthony's "declaration thin at best."
"If that's all I had, I think I might be able to find" for Precise and grant a preliminary injunction, the judge added. "It's unfortunate it all comes down to Mr. Anthony, and how this fellow suddenly appears on the scene." The judge will also look at what harm could come to the defendants if he grants the preliminary injunction.
Venture Aerobic and National Media aren't the only ones still sparring with Precise in court. Among the others is Palm Desert-based Guthy-Renker Corp., a huge player in the fitness-machine market. Guthy-Renker has asked Judge Paez to dismiss the case against it, arguing that its machine is different from the AB Trainer and so doesn't infringe on Precise's patent.
But in a ruling this month, the U.S. Supreme Court strengthened patent holders' rights when a product has similar, but not identical, properties to one that is patented.
"We hotly debate that" Guthy-Renker violated this so-called equivalence doctrine, says Bob Badal, Guthy-Renker's attorney.
Terms of Settlement
Meanwhile, a number of Precise's competitors have decided not to wait to see how Judge Paez rules on the various issues. Dallas-based Keys Fitness Products Inc. and Los Angeles-based L.A. Gym Equipment settled last month with Precise, conceding that Mr. Brown had invented the machine. Copeland Enterprises Inc., of San Luis Obispo, and Legacy International Inc. of Mahwah, N.J. -- named jointly in a second lawsuit -- settled this month. Body-Solid Inc. of Bloomfield, Ill., also settled this month.
As part of each settlement, the companies have agreed to licensing pacts under which they will pay royalties to Precise, according to Mr. Morelli, the Manatt Phelps lawyer and Precise's part-owner. In return, he adds, the companies are being allowed to start selling thousands of ab machines that have been warehoused since last November, when Precise's new patent prompted these competitors to voluntarily take them off the market.
A similar settlement is also being hashed out with Los Angeles-based Tiffany's Toys Inc., according to Mr. Morelli. Tiffany's attorney, Dan Cislo, couldn't be reached to comment.
And if Judge Paez grants the preliminary injunction against Venture Aerobic and National Media, Precise's lawyer expects even more of the company's rivals to come to the settlement table.
"The defendants will have to reconsider whether or not to resolve," says Mr. McDermott. |
