Who's Minding the Floor?

by Geoff Mantooth

2003 | Originally published in Fort Worth Business Press

What do bowling lanes have to do with grocery stores? A recent patent case illustrates the connection, one that involves the strategic use of patents to realize the full potential of an invention.

As you might expect, the wooden floor of a bowling lane is subjected to wear and tear from the dropping and rolling of bowling balls along its length, necessitating resurfacing from time to time. This is particularly true of those lanes that are open for birthday parties and amateurs. The lanes reserved for serious bowlers don’t get beat up as much, but are maintained more fastidiously.

The traditional way of resurfacing lanes involves sanding the old varnish off and then refinishing the bare wood. After several refinishings and sandings, the smoothness of the lanes deteriorates.

James Suiter of Omaha, Nebraska figured out an easier way to resurface bowling lanes. Instead of engaging in the laborious task of subtracting material by sanding, his invention applies a transparent, flexible film with an adhesive backing to the top of the lane. The stuff, which substitutes for the varnish, is simply laid on and pressed down in place. When the film wears out, it is peeled off and replaced. Suiter obtained two patents on his invention, focusing on the bowling lane market.

Sometime after filing his first patent application, it dawned on Suiter that bowling lanes weren’t the only venues with refinishing problems. It is common for an inventor to realize the potential of a new invention in stages. In the early stage, most inventors focus on solving a particular problem. As one gains experience though, new applications emerge. Suiter filed another patent application that covered more than just bowling lanes, spreading out to floors in general. In 1990, he obtained his third patent.

The third patent is the broadest one of the trilogy. Anyone who slaps a clear, uniform, flexible plastic film of a certain thickness on a floor with an adhesive may well infringe. That includes 3M, formerly known as Minnesota Mining and Manufacturing. 3M makes a product called Floorminders, which uses several adhesive-backed films to apply a graphic to a floor, and is marketed to retail stores. The bottom film contains the graphics, while the top film is a clear, protective layer.

For years, inventors and ad people have been dreaming up ways to put ads on floors. It is, after all, a huge, empty area of the store, just begging to do double duty. If you’ve been in a grocery store and stepped on an ad, you get the picture.

3M invented the highly successful Post-it notes, those small pieces of paper with adhesive covering part of the back side. 3M also has a reputation as an innovator for new products, a reputation that in the last few years has dimmed. Imagine 3M’s reaction when it was accused of infringing a patent that uses an adhesive-backed sheet. Even worse, with those long cold winters in Minnesota, 3M has to have a number of bowlers on its payroll, inspiring questions of, “How come we didn’t think of this?” Better still, imagine the patentee’s reaction when he first discovered that the retail store market was gargantuan compared to the bowling lane market.

With the stakes so high, both sides dug in for a fight. And it’s been a long one. In spite of two trips to the appellate court, there has not yet been a trial. Instead, the case has bogged down on the critical question of just how broad Suiter’s invention really is.

In Round One, the trial judge refused to extend Suiter’s patent beyond the refinishing market, effectively excluding 3M’s sales to stores. The appellate court said that was wrong. In Round Two, the trial judge said that 3M’s film isn’t uniform because the top clear film is textured. Suiter had added the requirement of “uniform” to the invention in order to convince the Patent Office that his invention was patentable. The Round Two interpretation effectively excluded infringement by 3M. The appellate court said that was wrong as well, sending the case back once again to the trial judge.

The fact that the 3M Floorminders product has an extra layer for the graphics apparently has not defeated the charge of infringement. This is because Suiter’s patent doesn’t claim an adhesive-backed film; rather the adhesive, although it contacts the floor, is merely between the floor and the film. This means that the adhesive can be on a bottom layer, a clever use of patent drafting. The result is that despite two gutter balls thrown by the patent owner, he’s able to stay in the game.