Over the past few years Oakley Inc. (“Oakley”) has relied heavily on design patents to protect its product line.  Most recently, Oakley filed a complaint for patent infringement against Thermor Ltd. (Thermor), Fry’s Electronics, Inc. (Fry), Best Buy Co. Inc. (Best Buy), Tool King LLC. d/b/a/ Toolking.com (Toolking), Laptop Travel, LLC., and Beach Trading Co., Inc. d/b/a/ Buydig.com (Buydig), (collectively “Defendants”) on February 14, 2014, in the Southern District of California (14CV0349-GPC-DHB).

In the complaint, Oakley asserted that the Defendants manufactured, used, sold, offered for sale and/or imported into the United States, eyewear allegedly infringing Oakley’s Design Patent No. D523,461 (’461 patent), directed to an Eyeglass Component.  As discussed further below, Oakley has asserted the ‘461 patent on numerous occasions in the past.

Oakley previously sued Hire Order, Ltd. on June 2012, (3:12-cv-02346-DMS-WMC) over its ‘461 patent, demanding that Hire cease the sales of its Sportsman Eyewear video recording system.

In this case, Oakley claims Thermor was “knowingly, intentionally and willfully directly infring[ing], engag[ing] in acts of contributory infringement, and /or induc[ing] the infringement of the D461 patent by directly and/or directly making, using, selling, offering for sale and/or importing eyewear covered by the D461 patent.” Oakley listed Thermor’s BIOS Eyewear Cam as an allegedly infringing product.

Oakley made similar statements regarding Fry, and Fry’s BIOS Eyewear Cam, Best Buy and Best Buy’s Thermor – BIOS Eyewear Cam, Laptop Travel and their BIOS Eyewear Action Cam, as well as Toolking and Buydig for their Thermor 604FC BIOS Eyeware Action Camera.

Reproduced below is Figure 1 of the D461 patent, and a representation of the Thermor 604FC BIOS Eyeware Action Camera as listed on the Buydig.com website.



In the complaint, Oakley noted that the Defendant’s alleged acts of infringement were undertaken without license from Oakley, that Defendants had “actual and/or constructive knowledge of the D461 patent … [and] infringed the D461 Patent with reckless disregard of Oakley’s patent rights.” Oakley further argued that “Defendants knew, or it was so obvious that Defendants should have known” that their actions constituted infringement.

Oakley requested a preliminary and permanent injunction, damages allegedly suffered by Oakley and/or Defendants’ total profit from the alleged infringement, with treble damages. Oakley further requested an award of attorney fees, and pre-judgment and post-judgment costs. A jury by trial was demanded.

This case is ongoing.

The ’461 patent was also asserted by Oakley in the cases listed below, several of which are ongoing.

Case Number	Date Filed	Date Terminated	Outcome	Court	Note
8:11-cv-00456-JVS-PLA	03/22/11	06/28/12	Dismissed without Prejudice	Central District of California (Southern Division – Santa Ana)
3:11-cv-01305-DMS-WMC	06/14/11	04/02/12	Default Judgment	Southern District of California (San Diego)
3:13-cv-01292-DMS-WMC	06/04/13	09/04/13	Dismissed with Prejudice	Southern District of California (San Diego)
5:11-cv-01975-JKG	03/22/11	05/12/11	Voluntary Dismissal by Plaintiff	Eastern Distirct of Pennsylvania (Allentown)	Oakley as Defendant
1:11-cv-00034-LRR	03/21/11	08/02/11	Dismissed in deference to parallel action	Northern District of Iowa (Cedar Rapids)	Oakley as Defendant
2:09-cv-00624-JVS-AN	01/27/09	07/29/09	Default Judgment	Central District of California (Western Division – Los Angeles)
8:09-cv-00062-JVS-AN	01/14/09	08/25/09	Dismissed with Prejudice	Central District of California (Southern Division – Santa Ana)
3:12-cv-02346-DMS-RBB	09/26/12	N/A	Ongoing	Southern District of California (San Diego)
3:14-cv-00349-DMS-RBB	02/14/14	N/A	Ongoing	Southern District of California (San Diego)
3:14-cv-00270-LAB-BLM	02/14/14	N/A	Ongoing	Southern District of California (San Diego)

On April 21, 2014 the USPTO’s Patent Trial and Appeal Board issued a final written decision in Munchkin Inc. et al. v. Luv N’ Care Ltd. (IPR2013-00072), the inter partes review of Luv N’ Care Ltd.’s design patent for a baby drinking cup.

The PTAB found Luv N’ Care Ltd.’s D 617,465 patent (the ’465 patent) unpatentable. This is the first time that the USPTO has invalidated a design patent under a post-grant review process created by the America Invents Act.

The ‘465 patent claims a drinking cup. Figures 2 and 3 are reproduced below.



In January 2012, Luv N’ Care filed an infringement suit for the ’465 patent in the Southern District of New York, against Toys R Us and Munchkin (NYSD-2-12-cv-00228).

In the complaint, Luv N’ Care stated that it had “generated hundreds of millions of dollars in revenue from the sale of goods under their trademarks and trade dress,” and that a series of competitors had allegedly “all deliberately copied [Luv N’ Care’s] designs, to illegally profit from them.”

Luv N’ Care sued the Defendants on counts of alleged infringement, trade dress infringement and unfair competition, federal trademark dilution, unfair competition under New York law, violation of New York general business law, and contributory infringement.

The ‘465 patent was also involved in the Luv N’ Care Ltd v. Regent Baby Products Corp, 10-9492 (S.D.N.Y filed Dec. 21, 2010), and Luv N’ Care Ltd v. Royal King Infant Prod’s Co. Ltd, 10-cv-00461 (E.D. Tex. Filed Nov. 4, 2010). Luv N’ Care settled with Royal King Infant Prod’s Co. Ltd, with Royal King agreeing to cease and desist from manufacture and sales of products likely to cause confusion.

In December 2012, Toys R Us and Munchkin (‘the Petitioners’) filed a petition for inter partes review, alleging that the ’465 patent was obvious in view of two references, US 2007/0221604 (the ’604 reference) and US 6,994,225 (the ’225 reference). This was the first inter partes review initiated by the USPTO for a design patent. 

The Patent and Trials Appeal Board (PTAB) determined that there was reasonable likelihood that the claim of the ‘465 patent would have been obvious over each of the ‘225 and ‘604 reference, and granted the petition for review.

First, Luv N’ Care argued that its ‘465 patent was entitled to an earlier effective filing date of US Application No. 10/536,106 (the ‘106 application), thereby disqualifying the ‘225 and ‘604 references. In response, the Petitioners argued that the ‘106 application lacked written description support for the ‘465 patent, based on differences in the spout.

Figures from both the ‘465 patent and the ‘106 application are shown below, as reproduced from the PTAB’s final written decision:



In its written decision, the PTAB stated the following differences “(1) the outer boundary of the spout tip of the claimed design is larger than that of the ‘106 application. … (2) the spout tip of the claimed design has a different, more rounded, oval shape than that of the racetrack shape of the spout tip in the ‘106 application; and (3) the spout tip of the claimed design has three concentric rings that the ‘106 application does not disclose.”

The PTAB further noted that although the ‘106 application stated that an oval or other shape may be used for the spout, the ‘106 application did not “identify the specific shape of the spout in the claimed design, or otherwise reasonably convey to those skilled in the art that the inventor had possession of the claimed design.” Accordingly the PTAB concluded that the ‘465 patent was not entitled to the filing date of the ‘106 application. The written decision notes that counsel for Luv N’ Care conceded that the claim was not patentable if denied the benefit of the filing date.

Second, Luv N’ Care submitted a motion to amend the patent. As reiterated by the PTAB, a motion to amend the patent must be responsive to a ground of unpatentability at issue in the trial, and it may not enlarge the scope of the claims, or introduce new matter. The patent owner bears the burden to establish that it is entitled to the relief requested by its motion to amend.

The amendment proposed by Luv N’ Care is shown in part below for Figure 3:



The PTAB stated that the “spout tip (left of center in each drawing above) is egg-shaped in the issued claim, whereas it is racetrack-shaped in the proposed amended claim. Additionally, the spout tip of the issued claim includes three concentric rings, whereas that of the proposed amended claim includes only two concentric rings.”

In its written decision, the PTAB stated that Luv N’ Care effectively argued that the proposed amended claim “is not broader than the issued claim because to ‘an ordinary observer,’ the designs are ‘substantially the same.’” However, the PTAB stated that it was not “aware of any authority that has applied the ‘ordinary observer’ test … to compare the scope of two claims.” The PTAB further noted that “the proposed amended claim is broader than the issued claim because it is broader with respect to racetrack-shaped spout tips and raised rim vents, even though it may be narrower with respect to egg-shaped spout tips and vents without raised rims.”

The PTAB held that the Petitioners had “shown by a preponderance of evidence that the sole claim of the ‘465 patent is unpatentable, and [Luv N’ Care] has not met its burden of proof on the motion to amend.”

In MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 2013-1433 (Fed. Cir., Apr. 2, 2014), the Federal Circuit addressed the obviousness of patents covering ornamental designs for dog jerseys.  In doing so, the analysis raises questions about whether the Federal Circuit has fully moved beyond the at times dismissive approach to design patents that has characterized some of its decisions in years past.

The Decision

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Celia Murphy, Supervisory Patent Examiner for technology Center 2900 (‘TC 2900’) was the host for Design Day 2014, the 8^th Annual Design Day.  Design Day 2014 appeared to have a significant increase in participants as the USPTO Madison Auditorium had only a few empty seats throughout the day.

Andy Faile, Deputy Commission for Patent Operations started the day off by highlighting two initiatives by the USPTO: interview practice, and a technical training program. Mr. Faile noted that a growing number of interviews were being conducted, benefiting examiners and practitioners alike, and that the number of requests for WebEx interviews was also increasing.

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On April 8, 2014, the U.S. Patent and Trademark Office (USPTO) hosted its 8th annual Design Day.  The schedule included Jihoon Kim, Ph.D., Deputy Director Design Examination Policy Division, Korean Intellectual Property Office (KIPO), who presented on the topic of recent changes in GUI design application protection at KIPO.

Of particular note, for design patent applications involving Graphical User Interfaces (GUIs), KIPO no longer requires specific indication of an underlying hardware product.  For example, prior to the change, a design application directed to protection for a GUI design required the GUI design to be shown with an underlying hardware product, such as a cellular telephone.  According to Dr. Kim, KIPO enacted the change to focus on the “heart and soul” of the GUI design and to minimize useless and possibly unduly limiting hardware visualization and description.

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