MELBOURNE, Australia (BRAIN) — A privately held Australian company that owns two bicycle seat patents, Icon-Intellectual Property, is suing Merida Industry and Selle Royal and has notified Giant Bicycles that it, too, may be infringing its patents.
Icon-IP has filed its patent infringement case in the Regional Court of Mannheim in Mannheim, Germany, and a separate action against Selle Royal in Italy. Selle Royal supplies Giant with Fizik-branded saddles spec’d on many of Giant’s high-end bicycles. Merida is using saddles in Europe branded with its own name.
If successful in the German court, Icon-IP would attempt to negotiate a global licensing agreement for saddles that essentially feature a groove in the middle of the seat. It’s a design first popularized in the U.S. when Specialized introduced its Body Geometry line in September 1999.
Merida has until Sept. 20 to respond, and unless a settlement is reached the case could be decided as soon as February 2017. The Mannheim Court specializes in patent cases and often rules on lawsuits within six to eight months of a suit’s filing — a system that’s much quicker than a similar action the in the U.S.
The saddle design in question features a narrow shape that concentrates the rider’s weight on the ischia or sitz bones, often with a split in the middle. That split creates, in effect, two hinges that allow each side to flex independently. The groove created by the design relieves pressure on the nerves and arteries connected to the penis.
The saddle design has sparked several lawsuits over the years.
Icon-IP was incorporated in Australia in May 2011 and took control of two patents owned by Paul Damian Nelson, an Australian cyclist and inventor. Nelson had been doing business as Nelson Seating Pty. Ltd., but lacked the financial muscle to challenge major companies in court.
An early lawsuit filed by Nelson Seating Pty. Ltd., filed in February 2005 in U.S. District Court for the Southern District of New York, claimed Selle Royal had infringed on its patents. The companies reached a confidential settlement in December 2006.
Icon-IP, now in control of the patents, subsequently sued Specialized Bicycle Components July 23, 2012, claiming the Morgan Hill, California, company had infringed the Nelson patents that Icon-IP now controlled.
The case, filed in U.S. District Court for the Northern District of California, was settled in May 2015 after almost three years of legal wrangling. The settlement agreement was sealed. However, estimates put legal fees in that case at more than $2 million.
According to court documents, in the late 1990s Nelson had approached several companies, including Specialized, with his saddle design, which roughly approximates the look of many of today’s saddles. Nelson had filed for patents in Australia on the saddle design in 1993 and 1997.
Nelson had received two U.S. patents for his designs, the first on July 3, 2001 (#6,254,180) and the second on April 30, 2002 (#6,378,938). Nelson’s patents noted the hinge design, that it promoted comfort and improved a cyclist’s speed, and that a “collapsible” nose reduced pressure on blood flow.
Specialized was granted a patent for its Body Geometry saddle designed by Dr. Roger Minkow on June 12, 2001, 21 days before Nelson’s patent.
Specialized had originally introduced its Minkow-designed saddle in September 1999. The new saddle came after a spate of publicity on cycling and erectile dysfunction sparked by a September 1997 article in Bicycling magazine written by Ed Pavelka.
Peter Strover, Icon-IP’s chief executive officer, declined to name the company it had sued or the jurisdiction. But a records search quickly discovered the Specialized suit. In a prepared statement sent to BRAIN, Strover noted that the settlement should give Merida executives “cause for thought.”
“If our court case succeeds — and we’re confident it will — we can take out an injunction preventing Merida from selling their infringing bicycles and that will come at enormous cost,” Strover said.
“Our patents are widely infringed and we’re putting the entire cycle manufacturing industry on notice that we will be knocking on your door soon, if we haven’t already,” Strover added. The company is also working with Chinese customs and intellectual property authorities to uphold and enforce Icon-IP’s patent rights in China.
