The International Trade Commission (ITC) recently terminated a Section 337 investigation, Certain Quartz Slabs and Portions Thereof (II) (Inv. No. 337-TA-1017), which involved U.S. Patent Nos. (1) D712,666; (2) D712,670; (3) D751,298; (4) D712,161; and (5) D737,058.
Discussed in detail on the Oblon ITC 337 Law Blog here and here, notably, the case involved the assertion of only design patents, the above-identified design patents, directed to quartz slabs. Also, the Commission declined to send the case to the ITC's Early Disposition Pilot Program, because Respondents' request that the Commission utilize the Early Disposition Pilot Program relates to only two of the five asserted design patents, and therefore does not involve a case dispositive issue, and use of the Early Disposition Pilot Program in this particular scenario would unduly delay resolution of the entire investigation.
This case is follow-on to Apple v. Samsung in 2012, which, generally speaking, included the U.S. District Court for the Northern District of California's denial of Samsung’s post-trial motion for judgment as a matter of law, new trial or remittitur (Pet. App. 114a-153a), followed by the U.S. Court of Appeals for the Federal Circuit (Pet. App. 1a-36a) denial of a rehearing en banc.
BMW Group is seeking a permanent injunction for infringement, destruction of products, advertisements, and packaging in TurboSquid’s possession or control bearing BMW Group’s trademarks or trade dress, and recovery of TurboSquid’s profits from the alleged infringement, treble actual damages, and reasonable expenses.
The design patents detailed in the suit include six BMW Group design patents pertaining to BMW, Mini, and Rolls-Royce branded vehicles produced by BMW Group. These are design patents D473,165, D639,209, D664,896, D714,190, D714,687, and D724,495. The ’165 patent is titled “Surface configuration of a vehicle, toy and miscellaneous consumer products incorporating the design,” and the other patents are each titled “Vehicle, toy, and/or replicas thereof.” For illustrative purposes, images from the design patents are shown below.
Importantly, this Request also points out that “it became clear that there exists a need to supplement the current provisions in the Manual of Patent Examining Procedure (‘‘MPEP’’) relating to 35 U.S.C. 112 for design applications.” Id. (Stop the press! Does the Request really say that? Yes, yes it does. Please read on….)