News

by Kim, Lahey & Killough Law Firm

GeigTech East Bay awarded $34.6 million in patent infringement case

South Carolina company GeigTech East Bay, LLC, awarded $34.6 million in damages in patent infringement case against Lutron Electronics

South Carolina company GeigTech East Bay, a maker of modern window shades, has been awarded $34.6 million dollar in damages by a New York Federal jury in a case against Lutron Electronics Co. for infringing upon a window shade patent obtained by Greenville patent attorney Douglas Kim for GeigTech East Bay.

The case involved GeigTech’s U.S. patent No. 10,294,717, for a “shade bracket with concealed wiring,” which was obtained by registered patent attorney Douglas Kim of Kim, Lahey & Killough law firm and granted on 05/21/2019.

With patent in hand, Geigtech East Bay, LLC filed a federal patent infringement complaint (with trade dress allegations) against Lutron Electronics Co., Inc. alleging that, among other things, patent infringement and trade dress infringement. One of the tactics used by Lutron was to try to invalidate the patent. However, the patent written by Kim withstood two challenges in the United States Patent Trial and Appeal Board as well as in the jury trial which concluded last week. On March 12, 2024, the jury returned a verdict stating that Lutron had infringed on GeigTech’s ‘717 patent on window shade brackets and awarded $34.6 in damages.

According to the jury verdict form filed March 15^th, when asked “Has GeigTech shown by a preponderance of evidence that any portion of the accused statement is true?” the form is marked “Yes” with a notation that “Lutron opted to poach (GeigTech’s) patented designs and intellectual property to try and remain competitive in a segment of the market that (GeigTech) cornered.”

As the finding of infringement was willful, GeigTech can ask the judge to triple the damages.

“This verdict underscores the importance of protecting intellectual property rights for businesses of all sizes,” commented attorney Kim. “We are thrilled that this patent has withstood numerous challenges, scrutiny and legal maneuvers and that our client has emerged victorious.”

The case was tried by Gary Sorden and his trial team in the firm Cole Schotz P.C.

Lutron was represented by Scott W. Breedlove Carter Arnett PLLC and his defense team.

The patent was originally filed by Richard J. McKenna of Foley & Lardner LLP and taken over by Douglas Kim of the Kim Lahey & Killough Law Firm.

Founded in Charleston, SC in 2011, James Geiger designed a revolutionary shading system: a window shade system with no visible wires or screws. His shading systems company J Geiger is known for its high-tech, minimalist, clean and modern shading systems, His business, J Geiger, provides superior shading systems to both high end home and commercial properties. J Geiger products have been featured in numerous publications including Forbes, dwell, The Architect’s Newspaper, Window Fashion Vision, This Old House, Gray, Aspen Peak, and BD West, where their products won Best in Show in 2019. For more information visit https://jgeigershading.com/ .

Kim, Lahey & Killough founding attorney Doug Kim began his professional career as a computer programmer and software engineer after his graduation from Davidson College. His intellectual property career began in 1998 when he combined his business experience with his legal education and was involved with enforcing a client’s patent against multiple infringers. Kim has created a well-rounded Intellectual property practice that provides client centric legal solutions and strategies tailored to each client from multinational corporations to start-ups.

With offices in Greenville and Charleston, SC and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients achieve their business goals and establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe.

by Kim, Lahey & Killough Law Firm

New DOL Rule Independent Contractor Classifications

New Department Of Labor Rule in Effect March 11 Affects Employee/Independent Contractor Classifications

Businesses relying on independent contractors need to know about the US Department of Labor’s new 6-factor test for determining worker classification under the Fair Labor Standards Act. This test narrows who is an “independent contractor,” and goes into effect March 11, 2024.

Key Changes in Worker Classification: New 6 Factor Test Used In Determining Worker Status. Factors considered:

1. Opportunity for profit or loss depending on managerial skill;
2. Investments by the worker and the potential employer;
3. Degree of permanence of the work relationship;
4. Nature and degree of control;
5. Extent to which the work performed is an integral part of the potential employer’s business; and
6. Skill and initiative.

DOL says these factors aren’t exhaustive. Instead, the analysis uses a totality-of-the-circumstances “economic reality” approach, allowing consideration of other relevant factors that “in some way indicate whether the worker is in business for themself.” Where the worker is dependent on the employer for work, they will not qualify as an independent contractor under this rule. Importantly, only the courts, federal and state agencies decide classification, not the employer or the worker.

Diverse Classification Standards:

Notably, this rule solely addresses DOL’s interpretation under the FLSA and does not supersede other law, such as state “ABC Tests,” IRS interpretations of common law, etc.

Serious Consequences for Misclassifying Workers:

• Owing double the worker’s damages
• Paying the other side’s attorney’s fees and costs
• Individual liability: individuals with a hand in misclassification aren’t shielded by the corporation; and
• To the extent a settlement is reached, the agreement itself—and the amounts paid—is public information.
• Not including IRS and/or DOL penalties.

What Employers Should Do Now:

1. Review existing and future independent contractor arrangements against the new framework.
2. Consider conducting a worker classification audit using the updated criteria.
3. Explore the IRS Voluntary Classification Settlement Program (VCSP) with guidance from a CPA.
4. Seek legal advice to understand the implications and ensure compliance.

If you would like for us to assist you in navigating the complexities of worker classification, please contact attorney Casey Martens at cmartens@kimandlahey.com or 864.973.6688.

by Kim, Lahey & Killough Law Firm

B C Killough named Thomson Reuters Stand-Out Lawyer

CHARLESTON, SC – Kim Lahey & Killough law firm is pleased to announce that B.C. Killough has been named to the list of “Stand-out Lawyers” by Thomson Reuters.  Each year, thousands of senior in-house legal counsels from around the world nominate the top three attorneys they have worked with during the past year.

Bill Killough has been recognized for decades by his peers in publications such as The Best Lawyers in America, South Carolina Super Lawyers and Charleston Business Magazine’s Legal Elite. Best Lawyers named him the “Corporate Lawyer of the Year” for the Charleston area in 2015. These client-nominated attorneys are “real stand-out lawyers [and] are distinctive because, in combination with their technical competence, they offer business savvy advice, deliver exceptional service, or integrate well with the client team,” according to Thomson Reuters.

Bill Killough practices law in the areas of intellectual property and business law, including commercial transactions. He is a registered patent attorney and has obtained more than 350 patents for clients and filed more than 1500 trademark applications on behalf of clients. He has experience as an intellectual property litigator, with at least one of his cases setting precedent. As a certified mediator, Killough assists parties in intellectual property and corporate disputes in coming to a resolution outside of a courtroom.

With offices in Greenville and Charleston, SC and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients achieve their business goals and establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe.

by Kim, Lahey & Killough Law Firm

Casey Martens admitted to NC Bar and GA Bar

Congratulations to Kim, Lahey & Killough attorney Casey Martens, who has recently been admitted to both the North Carolina and Georgia Bars. Casey heads up our Brevard, NC office and serves clients in GA, NC and SC in the areas of employment law counseling and compliance, employee investigations, wage and hour disputes, business disputes and litigation, contracts, and trademark analysis and registration.

A graduate of the University of Colorado and the Charleston School of Law, Casey has regularly been named as a Legal Elite of the Upstate by Greenville Business Magazine and a South Carolina Super Lawyers Rising Star as a Top Rated Employment and Labor Attorney.

With offices in Greenville and Charleston, SC and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe.

by Kim, Lahey & Killough Law Firm

Emily Bohan joins Kim, Lahey & Killough

GREENVILLE, SC – Kim, Lahey & Killough Law Firm is pleased to announce the addition of attorney Emily Bohan to the firm’s Greenville, SC, office. Bohan’s law practice focuses in the areas of franchise law, business formation and organizations (including LLC’s and Partnerships), business disputes, alternative resolutions, and labor and employment matters.

Bohan’s firsthand experience in navigating the complexities of running a franchise operation equips her with insights into the myriad of challenges faced by businesses; her own franchise business, PuroClean, will celebrate its 15th year in 2024. As an attorney, Bohan counsels businesses and individuals in all aspects of business law including business formation, contracts, franchise, employment, compliance, licensing, and trademark matters.

In addition, Emily Bohan is a South Carolina certified mediator and is able to assist parties in business disputes to come to a resolution outside of a courtroom.

Bohan earned a Bachelor of Arts in Economics and Legal Studies from the University of California, Santa Cruz and her Juris Doctor from the George Mason University School of Law. She is admitted to practice before federal and state courts within both South Carolina and Virginia.

With offices in Greenville and Charleston, SC and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe.

by Kim, Lahey & Killough Law Firm

Greenville Law Firm expands to Charleston and NC

Kim and Lahey Greenville Law Firm welcomes attorneys Casey Martens to our new North Carolina office, as well as B.C. Killough and Ernest B. Lipscomb, III in our newly established Charleston office. Moving forward, the firm will operate under the tradename Kim, Lahey & Killough.

These additions expand the firm’s geographical reach, enhancing its capabilities in providing legal services to companies ranging from start-ups and early ventures to established international markets throughout the Carolinas. Additionally, these combinations broaden the industries the firm can serve, including manufacturing, software, energy, finance, hospitality, tourism, and technology. Key practice areas will include intellectual property, business and commercial litigation, mediation, employment, corporate and business matters, mergers and acquisitions, contracts, and cybersecurity. Each individual firm brings unique benefits along with them.

North Carolina

Kim, Lahey & Killough is committed to advancing diversity and inclusion in the legal profession. Adding Casey to the team continues the active promotion of their passionate commitment to improve diversity in this field. The expansion into North Carolina has been secured by a new office location in Brevard, NC.

The practice areas of the firms are complementary and will heighten our presence in the South and North Carolina economies. “The practice strengths, collaborative culture and focus on providing exceptional client-centric service will help us to deliver even greater value to our clients. We’re confident that this combination will accelerate our growth and lead to long-term, sustained success,” says Doug Kim.

Casey Martens

Casey Martens brings a unique mix of interests and experience in public service and small-business restaurant management to her litigation contact and employment law practice.

Some of Casey’s highlights are her work with the South Carolina ACLU on prison reform, the League of Women Voters Voting Rights Act presentations and voter registration to South Carolina high schools, and the Young Lawyers Association’s initiative for educating students about the intersection and impact of social media, technology, and the law. For these and her other efforts, Casey was awarded the “William Bennett Regan Award for Outstanding Public Service” by the Charleston School of Law.

Experience has its advantages. With a decade of small-business management to draw on, Casey recognizes the realities and challenges that employers and employees face in small business settings. Her tenure in the food, beverage and hospitality industries gives her a uniquely informed view of how-to best structure and implement preventative measures such as policies, procedures, and employee manuals. Casey is adept at how to approach social issues like sexual harassment and racial discrimination, as well as financial issues such as non-payment of wages and overtime.

Previously, Casey served as an intern and a paralegal in a wide variety of legal areas, including product liability, probate, the SC Department of Health and Environment, and the US District Court for the District of South Carolina.

The South Carolina Lowcountry

The inclusion of B.C. Killough and Ernest B. Lipscomb, III in Charleston brings two legal powerhouses.

B.C. Killough

For over thirty years, Bill has provided legal services in the areas of patents, trademarks, copyrights, commercial transactions, litigation, and mediation to his clients.  He is a Senior Fellow with the Litigation Counsel of America, is rated AV Preeminent® by Martindale Hubbell®, and listed in The Best Lawyers in America (2015 Charleston, SC Corporate Lawyer of the Year), South Carolina Super Lawyers and Charleston Business Magazine as one of its Legal Elite. Killough and his co counsel Lip Lipscomb both previously served as adjunct professors of the patent law course at the University of South Carolina School of Law.

Ernest B. Lipscomb, III

Ernest B. Lipscomb, III is the author of the seminal eleven-volume treatise in the patent field, Lipscomb’s Walker on Patents, and Lipscomb’s Patent Claims. He has also testified as an expert witness in numerous patent cases. Lipscomb is rated AV Preeminent® by Martindale Hubbell® and recognized by both The Best Lawyers of America and Super Lawyers for his work in trademarks, patents, and intellectual property law. In 2015, the South Carolina Bar Foundation honored him as a member of the Nifty Fifty Class.

“We are excited to bring the comprehensive knowledge of both Bill and Lip to the firm and look forward to further enhancing the legal services we offer to our existing and future clients”, says Doug Kim. “With this new expansive presence in both Carolinas, Kim Lahey & Killough not only gains a larger geographical footprint, we increase our resources network, enabling us to provide an expended legal service offering to our clients.”

Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights. With our client-centric focus, we seek to understand your needs and customize legal solutions that best achieve your goals and budgets.

by Kim, Lahey & Killough Law Firm

European Man Sentenced for Impersonating USPTO

by Kim, Lahey & Killough Law Firm

Doug Kim named Best Lawyers® 2022 Trademark “Lawyer of The Year” in Greenville

Greenville, S.C. — August 19, 2021— A founding member of the Kim & Lahey Law Firm is named Best Lawyers® 2022 Trademark “Lawyer of The Year” in Greenville. This is the seventh time Douglas Kim has been recognized by Best Lawyers. The long-time intellectual property attorney says, “I am honored to have been selected for this ‘Lawyer of the Year’ award especially since it’s determined by peer reviews.”

The 2022 edition of The Best Lawyers in America recognizes the professional excellence of more than 66,000 lawyers in 147 practice areas.  “Lawyer of the Year” honors are awarded to only one lawyer per practice area in each region with extremely high overall feedback from their peers, making it an exceptional distinguishment. Of all the attorneys in private practice in the United States, only 5% are recognized by Best Lawyers of America.

This is the second time Doug has received this top honor. In 2019, Doug was named Best Lawyers® Patent “Lawyer of The Year” in Greenville.

Doug is an innovation enthusiast, entrepreneur and long-time business advocate who enjoys providing legal solutions and strategies tailored to each client’s goals, from start-ups to multinational corporations. Doug helps clients match their intellectual property goals with their business goals by providing legal strategies to protect inventions (patents), brands (trademarks), websites, software, apps, music, photos, and websites (copyright, licenses and Internet law), and trade secrets. Doug also chairs the South Carolina Bar Intellectual Property and Innovation Committee.

by Kim, Lahey & Killough Law Firm

United States Issues Patent Number 11,000,000

WASHINGTON – The United States Patent and Trademark Office (USPTO) today officially issued U.S. patent number 11 million, recognizing an important milestone in American innovation and ingenuity.

“This momentous benchmark is a reminder of the remarkable and enduring tradition of American innovation that has driven our nation forward for generations,” said U.S. Secretary of Commerce Gina Raimondo. “Building our economy back stronger requires new ideas and innovative solutions from every sector. I am proud to recognize patent 11 million, its inventors, and its promise.”

“Since the founding of our nation, American inventors have driven our culture and commerce with incredible ideas that have improved every function of our lives,” said Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “We owe a debt of gratitude to inventors who continue to show up day after day with solutions to the world’s most pressing problems. We congratulate the inventors behind patent 11 million and all of the innovators who helped the country reach this milestone.”

Patent number 11 million, granted to co-inventors Saravana B. Kumar and Jason S. Diedering of 4C Medical Technologies, Inc. in Maple Grove, Minnesota, is for a utility patent that provides a new method for delivering, positioning, and/or repositioning a collapsible and expandable stent frame within a patient’s heart chamber.

“We are incredibly excited and honored to be granted U.S. patent number 11 million for our invention,” said inventor Saravana Kumar. ”The 4C Medical beginning is a true story of American entrepreneurship, where Jason and I worked in a garage many nights and weekends to turn this idea into reality. We could not have gotten here without the support of so many, including my wife Katherine and 4C Medical’s founder, physician Dr. Jeff Chambers. Currently, our team is actively working to demonstrate the benefits of our technology to treat patients with severe mitral regurgitation as part of a U.S. clinical trial.”

“4C Medical’s approach to inventing is simple—we identified a need, created a solution, and demonstrated its benefits. We are a team of highly driven and creative engineers who are committed to bringing lifesaving technologies to people who need it most,” explained inventor Jason Diedering.

Background on the U.S. patent system

Patents predating the Patent Act of 1836 were unnumbered, identifiable only by the name of the patentee and the date of issue. These patents became known as “X-patents” after Patent No. 1 was granted to Senator John Ruggles on July 11, 1836 for a traction wheel for steam locomotives—the first patent issued under the new law, which officially assigned patent numbers. A few months after the Patent Act of 1836 was enacted, a catastrophic fire at the Patent Office destroyed almost all of the records and models related to the X-patents. Efforts to reconstruct the records lost in the fire continue to this day.

Patent 11 million comes three years after the USPTO issued patent number 10 million in 2018. As part of that celebration, the USPTO redesigned the official U.S. patent cover—the seal-and-ribbon document awarded with each patent grant—paying homage to the classic elegance of its predecessors. A list of the patent milestones can be found here.

by Kim, Lahey & Killough Law Firm

Kim & Lahey Law Firm Sponsors InnoVision Award for Small Business

The attorneys of the Kim & Lahey Law Firm have been supporting the entrepreneurship community for over 20 years and are happy to continue our support for InnoVision, an award program that recognizes innovation in South Carolina annually. This year, InnoVision received a record number of applications reflecting both the strength of the innovation economy in South Carolina and the special circumstances of the 2020 pandemic.

This year we are sponsoring InnoVision’s Small Enterprise Award, which recognizes a small business for creative technology development or innovative technology application. The technological innovation may be applied to a product, process or service that is intended for sale to customers or for use inside of the organization.  To be eligible for this award, the organization must employ fewer than 50 full-time employees or generate less than $20 million in revenue.

InnoVision is hosting a series of Meet the Finalists online get-togethers to announce and congratulate finalists in two award categories each Tuesday at 4:00pm. The Small Enterprise Award finalists will be announced tomorrow, October 13.  Please join us through this registration link.

The winners will be announced at the Tuesday, November 17^th Awards Ceremony.  This year, since it’s an online event, it is open to the public and we will let you know when registration is open.

InnoVision Awards was established in 1999. InnoVision Awards are the mark of distinction for outstanding leadership, innovation, and technological excellence.