Todd Sommerfeld, left, and Tim Zarley discuss a patent lawsuit filed by a California inventor that threatened the survival of Kreg Tool Co. Photo by Duane Tinkey
Todd Sommerfeld, left, and Tim Zarley discuss a patent lawsuit filed by a California inventor that threatened the survival of Kreg Tool Co. Photo by Duane Tinkey

As patent cases go, Tim Zarley thought his client was on the right side of the law. He took a look at a lawsuit against Huxley’s Kreg Tool Co. and decided the defense just needed a little clarity.

In September 2009, family-owned Kreg Tool was fighting for its life in a federal courtroom in San Diego.

A retired Hughes Aircraft Co. engineer was suing the company, claiming it had no right to the design of a tool called a pocket jig that is used to drill angled holes for joining pieces of wood.

The concept of pocket jigs dates to the ancient Egyptians, but Joon Park, the former Hughes engineer, who has registered 19 patents since 1987, claimed that he had sole right to three pocket hole jig designs he had registered with the U.S. Patent Office beginning in 2003.

Park, who resides in Glendale, Calif., was asking for $20 million in damages, more than the net worth of Kreg Tool. Negotiations to settle the case out of court were going nowhere. After suing Kreg Tool in February 2008, he also filed patent infringement lawsuits against two other companies, claiming that they, too, stole his designs. Those cases were combined and settled out of court.

He used the case against Kreg Tool as leverage in the negotiated settlement. Park’s attorney wrote in a letter to CMT USA Inc. in Greensboro, N.C., that he would include the company in the suit against Kreg or take the company to court in a separate action “unless we can resolve this matter amicably.”

According to court records, Park and CMT reached a confidential settlement. Park’s attorney, Paul Adams of Albuquerque, N.M., did not respond to a request for an interview.

That was the setup when Zarley entered the case, which would take on a life of its own outside the courtroom.

Saving a company

Zarley learned about the case in an e-mail from Todd Sommerfeld, the son of Kreg Tool founder Craig Sommerfeld.

Todd Sommerfeld was looking for a patent attorney to take a look at the case, which was nearing the summary judgment phase in which a judge would rule for or against the parties. The case was “certainly complicated” and he wasn’t sure that it was turning in favor of Kreg Tool’s favor.

“I realized that if this case went to trial, we needed different representation,” Sommerfeld said.

He asked friends whether they knew of any good intellectual property attorneys and was referred to Zarley Law Firm PLC, another family-oriented business with an office in Des Moines.

Sommerfeld refused to enter into an out-of-court settlement with Park. A loss would destroy the company that his father, Craig Sommerfeld, founded in 1986 and had built from a seat-of-your-pants operation to a major player in the woodworking industry, employing more than 100 people in Huxley, a town of 2,300 people located 25 miles north of Des Moines.

“From what he claimed he wanted, it would have made it difficult to continue the company,” Sommerfeld said. “It turned from being a very annoying thing to being a very serious thing.”

The pocket jig was created when Craig Sommerfeld, a journeyman tool and die maker, was building a home and needed a way to attach face frames on kitchen cabinets. He designed and built “Craig’s Jig” from steel and aluminum. He could fix a piece of wood to the jig and drill a pocket that would be hidden from view on the finished cabinet. The device eliminated the need for more elaborate forms of joinery.

He built a few more jigs and took them to a conference at Iowa State University. He didn’t sell a single product, but went home, built a few more and took 18 to a woodworkers’ trade show. He sold them all and took orders for an additional 21.

As a result, the family enterprise was born. Todd Sommerfeld recalls building the jigs during the week so that his dad could travel to trade shows across the country.

There was little competition. One competitor said in court documents that the market was too small and too risky to continue providing the product.

Nonetheless, the pocket jig is commonplace in many home workshops, and a more sophisticated version is used in production shops.

That original jig was patented in 1990 and was Kreg Tool’s featured product for a decade. The company began changing designs and adding models, some in which the height of the pockets could be adjusted along a piece of wood.

In 2008, the company even put together an infomercial to bring the pocket jig to a wider audience. Zarley said he first saw the commercial during an initial trip to California to participate in the lawsuit.

“I woke up in the middle of the night and it was on television,” he said.

It is not known whether Park saw the infomercial, which helped Kreg Tool withstand the recession and actually increase sales.

Invoices submitted during the patent trial show that Park bought the original jig and an updated model that had been developed in 2000.

Through discovery, it was learned that Park wanted to reverse engineer the products. However, he testified that he put them in his closet and never used them.

Whatever his motivation, Park did not disclose in his patent application that devices similar to his pocket tool already existed.

As pointed out in Kreg Tool’s counterclaims, Park at no point manufactured, sold or used the pocket jigs he designed. He had no investors in any type of company that could produce the product.

After Zarley entered the case, a judge agreed to dismiss two claims against Kreg Tool but ruled that other issues would have to be decided by a jury.

Craig Sommerfeld watched the trial from the gallery as his son and Zarley defended the company.

Todd Sommerfeld said the experience was nerve-wracking, primarily because he knew he was under Dad’s watchful eye as he attempted to save the family enterprise.

Dad’s influence

During the trial, Zarley was calling on the influence of his own father, Donald, who had passed away several years earlier.

Donald Zarley was a founding partner in 1954 of the Zarley, McKee, Thomte, Voorhees and Sease law firm. He was fresh out of law school and focused on patent law. He also had an engineering degree and could produce drawings for clients who could envision a product but could not draw the plans that must be submitted to support patent applications.

“It’s a different mentality that can see things that don’t exist,” Tim Zarley said about inventors.

Zarley admired his father’s work, but initially he wanted no part of it. After college, he went into banking, then started a company that produced corporate videos.

At age 35, he decided to go to law school. After graduation, he didn’t want to work for his father and he didn’t want to be a patent attorney.

He would end up working for his father’s firm, and in December 2001, in an effort to return to a simpler style of representing clients and to shed the trappings of a large firm, father and son formed the Zarley Law Firm.

By that time, Donald Zarley was something of a patent law legend. He had pressed for changes to patent law that eventually were adopted in the early 1980s.

Tim Zarley came face to face with the wide path left by his father when he conducted the first deposition in the Kreg Tool case. He remembers the date, Dec. 17, 2009.

Park’s lawyer, Paul Adams, asked Zarley whether he was any relation to a “Don Zarley.”

Adams and Donald Zarley had squared off in a case that determined that the word “trampoline” was a generic term.

The case involved 1951 Big Ten trampoline champion Bill Sorensen of Jefferson and the trampoline manufacturing company he started in his hometown. A competitor sued Sorensen for trademark and patent infringement. Depositions were taken across the country and in France, and witnesses included movie stars and circus performers.

Zarley represented Sorensen. Adams worked for a law firm representing the competition. A judge sided with Zarley’s client.

Sorensen later wrote that Zarley saved his company.

Tim Zarley recalls that when he was a boy, a new trampoline would show up every so often in the driveway, a gift from Sorensen.

“It was an important case in my dad’s career,” Zarley said.

He noted that he told his mother and family about trying a case against his dad’s old adversary.

“Mom got quite a kick out of it,” he said.

During the Kreg Tool case, the sons of successful fathers began forming a bond.

“We looked under the covers of each other’s businesses a little bit,” Todd Sommerfeld said.

The similarities were striking. The fathers had instilled a strong work ethic shaped around honesty, a lack of flamboyance, and dedication to family, co-workers, clients and customers.

“There was an understanding of each other and what we are going through,” Sommerfeld said.

The similarities were so strong that Zarley mentioned them during his closing arguments.

“In a way, I felt as though we were talking about ourselves,” Zarley said. “I said it was a pleasure to represent Kreg Tools because they cared about what they were doing.”

A winning verdict

Kreg Tool won the case on all counts taken before the jury. But a jury verdict can be appealed, so Sommerfeld offered to buy the rights to Park’s three designs, providing the inventor agreed not to appeal the ruling.

In the end, Park was paid $300,000 for the patents, which are not being used on any Kreg jigs.

“We wanted peace of mind,” Sommerfeld said.

About 5 percent of patent cases wind up before a jury, where the outcome is always uncertain.

“We had a nice victory, but we didn’t want to gloat about it,” Zarley said.