Clause 8 Podcast: How the PTAB Killed Molly Metz’s Patents

The copy writes itself: “Five-Time Woman World Jump Rope Champion Transforms Fitness Industry after Securing Patents.”  However, you’re unlikely to find a glowing profile of Molly Metz on the U.S. Patent and Trademark Office (USPTO) website anytime soon. That’s because, after the fitness industry embraced Molly’s invention as the gold standard for speed jump ropes, the Patent Trial and Appeal Board (PTAB) of the USPTO invalidated the claims of the patents based on prior art from 1978 and 1979. Professor Dennis Crouch of Patently-O called the PTAB decision “fairly questionable as applying hindsight bias in justifying the combination of prior references.”

In this episode of Clause 8, Eli Mazour is joined by Molly and her husband, Dirk Tomsin (pictured above), to tell their story. A serious car accident spurred Molly to invent the new type of jump rope. Thanks to patents that were awarded to her by the USPTO, Molly’s company – JumpNrope – started making the jump ropes completely in the United States and licensing the patents to various fitness companies that eagerly relied on her jump rope technology.

It should have been the perfect story that the USPTO could tout about how America’s economy benefited from a woman inventor taking advantage of the patent system. Instead, Rogue Fitness – the largest fitness distributor for CrossFit – challenged Molly’s patents at the PTAB. In the latest episode of Clause 8, Molly and Dirk talk about dealing with the aftermath of that and fighting for a better future for other inventors.

On the Rewarding Experience of Obtaining a Patent

• “You just go into this process thinking wow, I’m going in for a patent…it’s a lengthy process. We got the first one in 2010. And knowing that you had that support and protection, even if your invention isn’t going to be big, it’s just a rewarding feeling. You just feel special. You have this ribbon and you’re an innovator, you’ve created something, and I thought that was cool. There’s obviously interest in your jump rope. People are seeing you using it. You’re going through this process of getting a patent. And through this process you actually see, wow, this is something, what I have is really new. And maybe it’s not the first jump rope in the world, but it’s the first [of] THAT jump rope in the world.”

How Patent Protection Transformed Her Company

• “I had my company JumpNRope, but it was geared towards . . . working with kids in schools. I started to sell jump ropes when I got my patent in 2010, knowing I had protection, knowing this could be something that I could offer to the world.”

Decision to Manufacture the Jump Ropes in Colorado and Not China

• “Over the last 12 years of doing business, I’ve had so many people come to me saying, ‘you’re wasting money, you’re spending so much money on parts being bought in America, you could probably go to China and spend less than half of what you’re spending here. Your profit margins could be better.’ And I said, ‘I don’t care.’”

When the Patent System Worked for Molly

• “When I contacted [an infringing company] Again Faster, I said, ‘hey, you know, you’re infringing.’ And they said, ‘you’re right.’ And they stopped. And that was one of my first big companies I started doing business with. We would manufacture for them, do the pad printing, and then fulfill their [orders].”

When Things Started Going Rogue

• “I reached out to Rogue and said, ‘rumor has it that you are interested in carrying my jump ropes.’ And he said ‘yes, I’ve been wanting to work with you [and] find out who you are. And I’m glad that you reached out – let’s do a deal.’ So we started talking about how the licensing deal was going to look, kind of going back and forth on if he was going to make them or if I was going to make them. And as that was going on, that conversation just sort of stopped. A couple of months go by and then Rogue Fitness comes out with their launch of their new rope and it was my technology. And so, I wrote to Bill, the owner of Rogue Fitness, and said ‘hey, I thought we were in negotiations.’ And his reply was ‘talk to my attorneys.’”

Reaction to Federal Circuit’s Rule 36 Judgment

• “I was completely confused. Dirk and I flew out to DC for that hearing at the Federal Circuit, because again, going through the [inter partes review] IPR, getting their decision, and then our attorneys, everyone was just so confused. And we’re like, ‘okay, look, this appeal is what’s going to finish it all off, right?’ The Federal Circuit is going to actually see, we’ll call it the stupidity of this decision. So, we flew out, and like you said, this is my life’s work on the line. We’re gonna put all the good energy there. And our attorneys say, ‘okay, let’s wait six months now for their decision’ – to get that ruling two days later. Oh, man. I mean, it crushed me. I just [wanted] to find out what [a Rule 36 ruling] meant…they affirm? They don’t agree, they don’t disagree? And I’m thinking, how do they even know? It’s been two days. Did they look at it? Are they too busy? I mean, it’s just insulting.”

Impact on Women and Hopes for the Patent System

• “I think [my story] will discourage other inventors. I don’t want it to… I want to be an advocate for innovation in our country. And I want to be an advocate for patents and for women business owners and for women to have patents. One day, we’ll be back there, when things get fixed. But as things stand now, I don’t think it’s wise to get a patent, especially if you’re going to have a commercial success. They first need to fix the problem before they push people into owning patents.”