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Update: The great clay debate

October 11, 2010
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The use of detailing clay in the carwash industry, which began in the early 90s, has sparked controversy among manufacturers and has received frequent media attention.

The problem behind the clay really deals with patent laws and differentiating products. Eventually, the issue with clay ended up in the federal courts, most recently with the Kucala vs. Auto Wax case.

And, despite years of litigation, as of press time, the clay debate still remains, to some extent, unresolved.

Patenting in a nutshell
The difficulty with the clay product arose when one company, Auto Wax of Dallas, patented its Clay Magic line. The boundary quickly became very blurry as to what fell under the patent’s description.

People patent things when they know they have a good product that will make them money. But, a patent is only as strong as the individual standing behind it.

No one but the patent holder is required to enforce the patent’s terms.

To enforce a patent essentially means to take someone to court that appears to be infringing or violating the rules of your patent by producing the same product.

David Miller, president of Auto Wax, decided to stand behind his patent and bring to light the patent infringement he believed was occurring.

What followed was a string of lawsuits that left the car-care industry questioning whether Miller was attempting to monopolize the clay market or legally defend his patented product.

Kucala attacks
By 2002, US Patent No. 5,727,993 (better known as “the 993 patent”) seemed a formidable and unbreakable opponent in the legal arena, leading one to question why John T. Kucala III, owner of Kucala Enterprises, would willingly enter the judicial ring against it.

Kucala said the company filed a declaratory judgment action against Auto Wax because “Auto Wax was misleading the industry to believe that Auto Wax owned a monopoly on all detailing clay.”

According to Kucala, he also believed it was just a matter of time before Auto Wax brought suit against his company for patent infringement.

In previous interviews with Professional Carwashing & Detailing, Kucala said that, “It is going to be about making sure consumers have a choice about what types of clay they want to use.”

No matter what the reasoning behind the suit was, both Kucala and Auto Wax looked to the court to settle the clay patent dispute.

Court confessions
It’s easy to become confused by the two sides’ arguments concerning the litigation. The unwavering truth behind the court’s decision lies in one place — the court proceedings.

The judge came to one conclusion concerning Kucala’s product that was under scrutiny: it did infringe.

The preliminary injunction order by Judge Lefkow on Nov. 2, states, “Kucala violated the Court’s orders and destroyed evidence by, among other things, using the Evidence Eliminator computer program.”

This statement refers to the debate concerning vital business documents Auto Wax alleged that Kucala destroyed in order to hide infringement.

The court document doesn’t specify whether the court believes one side over the other concerning that specific issue.

Furthermore, according to the court documents, when Kucala filed his original suit against Auto Wax, Auto Wax filed a motion for Preliminary Injunction and/or Bond and provided expert reports that demonstrated evidence of infringement.

The injunction order continues, saying that Kucala’s response did not include any evidence of non-infringement. The court ordered all Kucala employees, agents, owners and legal council to:

  • Stop making, using, selling, offering for sale, importing, advertising or soliciting sales of automotive detailing clay or clay-like products — unless and until the clay is found not to infringe.
  • Omit all references to clay from any and all of its websites.

Cut and dry?
The court’s ruling appears to be pretty cut and dry: at press time Kucala isn’t allowed to make or sell clay anymore. However, the debate remains far from over.

Kucala contends that there are three important elements that lie within claim 57 of the 993 patent that define the clay as separate from “previous art.” Previous art means similar clay products that don’t fall under the patent’s terms.

According to Kucala, if at least one of those three technical elements is removed from the clay, then the method has changed and therefore isn’t defined under Auto Wax’s patent.

Kucala intends to produce to the court a product that doesn’t encompass all three elements, which he believes will force the court to okay the new method, essentially allowing him to sell a clay-like product.

While Kucala believes that his new method will inevitably be approved by the court, Eric Meyertons, Auto Wax’s attorney, told PC&D that he does not believe Kucala has a valid argument.

He feels the court will again rule that the new method will still fall under the terms of infringement.

Endless battle
Auto Wax’s track record in the justice system has shown that their patent and its limitations on other clay producers does have a strong foundation.

In addition to the numerous suits ruled on by the court in Auto Wax’s favor, there have also been a number of cases filed against various companies who appeared to be infringing on Auto Wax’s patent that were settled successfully out of court.

According to Miller, Auto Wax initially approaches companies who they believe to be infringing out of court, to attempt to negotiate and compromise, however sometimes the two parties can’t come to agreement and the issue ends up being settled judicially.

Miller told PC&D that he does not enjoy taking companies or individuals to court, however he understands that defending a patent is a long-term commitment that at times requires a lot of investment and effort.

In most cases, Miller said that the more sophisticated the company is, the more seriously they consider Auto Wax’s patent rights.

Three sides to every story

Meyertons said that Auto Wax is pleased with the outcome of the Markman hearing and the preliminary injunction banning Kucala from making or selling clay.

Kucala said he is happy that the Markman hearing helped clearly define what is considered infringement on Auto Wax’s patent because he can now effectively design a new method around those terms.

For the moment it seems that the clay debate has been paused while Kucala gathers something new to submit to the courts.

In Kucala’s eyes, the court will have no choice but to approve what he submits before them based on the patent’s infringement terms and the limitations agreed upon in the Markman hearing.

In Auto Wax’s view, Kucala’s attempt to market a different method will be shot down by the judge who will rule that the submission still infringes on Auto Wax’s original patent.

In the eyes of the court and the carwash industry it appears that the great clay debate is far from over and the many questions surrounding the issue are only slightly closer to being answered.