Tuesday
Feb072012

Skechers files a complaint alleging footwear design infringement

Skechers U.S.A., Inc. filed a complaint against The Children’s Place Retail Stores, Inc., on February 2, 2012 (case number 2:2012-cv-00928 in the U.S. District Court for the Central District of California) alleging that Children’s Place manufactures, imports, sells, and offers to sell a line of footwear that “embodies and infringes the patented invention” disclosed in Skechers’s U.S. Design Patent D571,095.

The design patent at issue claims the ornamental design for a “crystal-covered show toe cap,” shown below.

Figure 1 (left) and Figure 3 (right) from U.S. D 571,095

The complaint alleges that “Children's Place footwear line includes, among others, shoes that have a vulcanized canvas sneaker, a toe cap adorned with crystal, rhinestones, sequins or a plurality of other similar shiny elements, and canvas uppers distinguished by colorful art designs or patterns.” Images of the allegedly infringing footwear, taken from page 8 of the complaint, are shown below.

Examples of allegedly infringing Children's Place footwear

This complaint against Children’s Place follows Croc’s successful enforcement of footwear design patents against Skechers, which we previously covered.

Monday
Feb062012

New proposed legislation to create design patent infringement exceptions for motor vehicle parts

On February 2, 2012, Representatives Darrell Issa (R-Calif.) and Rep. Zoe Lofgren (D-Calif.), members of the House Judiciary Committee, introduced H.R. 3889, a bill entitled the Promoting Automotive Repair, Trade, and Sales (PARTS) Act.

The proposed bill would create exceptions from acts of infringement under 35 USC 271 for certain component parts of motor vehicles.  Under the PARTS Act, with respect to a design patent that claims a component part of a motor vehicle as originally manufactured,it shall not be an act of infringement of such design patent to make or offer to sell within the United States, or import into the United States, any article of manufacture that is similar or the same in appearance to the component part that is claimed in such design patent if the purpose of such article of manufacture is for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured.”

Further, “after the expiration of a period of 30 months beginning on the first day on which any such component part is first offered to the public for sale as part of a motor vehicle in any country, it shall not be an act of infringement of such design patent to use or sell within the United States any article of manufacture that is similar or the same in appearance to the component part that is claimed in such design patent if the purpose of such article of manufacture is for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured.”

Similar bills have been previously proposed, without success.  Supporters of such reform argue that such legislation will lower cost for automobile repairs.  Not surprisingly, the insurance industry endorses such efforts.  Opponents of such bills point to the cost of developing quality parts, well designed to safely function as needed and to appeal to consumers at the same time.  The opponents believe that allowing anyone to knock off these parts would not help the auto industry in this country.

Tuesday
Jan312012

Apple v. Samsung: Summary Update - January 2012

Engadget has started a "Follow the Saga" feature concerning the ongoing Apple v. Samsung feud, including the most recent announcement that the ban on the original Galaxy Tab 10.1 has been upheld in Germany.  The "Follow the Saga" coverage at Engadget also includes Samsung's 3G lawsuits.

Of note, Apple filed another suit against Samsung in Germany on January 17, 2012, asserting Registered Community Design Nos. 000748280-0006 and 000888920-0018 against 15 Samsung phones between the two designs, as reported by FOSS Patents.  There is an invalidity proceeding pending in both, each initiated by Samsung on August 9, 2011.

Registered Community Design No. 000748280-0006

Registered Community Design No. 000888920-0018

 

Tuesday
Jan312012

Nestlé continues Trend of Recent Consumer Products Design Patent Complaints

Continuing a pattern of design patent infringement suits involving consumer products filed in recent months, Nestlé Healthcare Nutrition, Inc. “(Nestlé ) and Gerber Products Company (“Gerber”) sued Mead Johnson & Company, LLC (“Mead Johnson”) in the United States District Court for the District of Delaware on January 26, 2012.

The suit, 1:12-cv-0079, alleges that the sale of certain Mead Johnson bottles infringes Nestlé’s U.S. Design Patent No. D 447,421 (“the ‘421 patent”).  The complaint further alleges unfair competition, trade dress infringement, and various state law causes of action against Mead Johnson.  The ‘421 patent is directed towards an ornamental design for a bottle.  See Fig. 1 to the left. 

The Nestlé complaint states that the patented bottle has been used in its Boost® line of nutritional drinks.  ¶ 14.  Mead Johnson has supplied Nestlé with the products covered by the ‘421 patent.  ¶ 14.  However, Nestlé alleges that Mead Johnson also supplied infringing bottles as private label products to Wal-Mart, Kroger, and Sam’s Club without a license.  ¶ 19.  In an unusual twist, the allegedly infringing products are reportedly marked with the ‘421 patent number.  ¶ 19.

Notably, Mead Johnson had previously sued Nestlé and Gerber in United States District Court for the Southern District of Indiana in August 2011, 3:11-cv-0100, for infringement of U.S. patent no. 7,040,500 entitled “Container and Scoop Arrangement.”  Thus, this month’s Nestlé suit asserting the ‘411 design patent appears to be part of a larger dispute between the companies.

In November 2011, Crocs Inc. (“Crocs”) brought suit against Walgreen Co. in the United States District Court for the District of Colorado, 1:11-cv-02954, alleging infringement of U.S. Patent No. D 610,784 (“the ‘784 patent”) and U.S. patent no. 6,993,858.  The ‘784 patent is directed towards an ornamental design for footwear.  See Fig. 1 to the right. 

The Crocs complaint states that prior to filing suit Crocs sent Walgreens a letter asking that Walgreens cease and desist selling its “Caribbean Cartel” footwear.  ¶ 20.  Crocs had previously asserted other design patents on its footwear as reported, for example, in Crocs Inc. v. Int’l Trade Comm’n., 598 F.3d 1294 (Fed. Cir. 2010). See our prior postThe most recent Crocs suit is an example of the common strategy of asserting design patents in combination with utility patents against an alleged infringer.

Finally, in October 2011, Kohler Co. (“Kohler”) sued Amerisink, Inc. in the United States District Court for the Eastern District of Wisconsin, 11-cv-921, asserting infringement of two design patents, nos. D 510,985 (“the ‘985 patent”) and D 529,147 directed towards ornamental designs for sinks.  See Fig. 1 of the ‘985 patent to the left.  

Kohler asserted that Amerisink infringed these patents through its sale of certain stainless steel sinks.  ¶ 21.  As in the Crocs suit, Kohler reported that it sent Amerisink a cease and desist letter regarding the alleged infringement prior to filing suit.  ¶ 22.

Design patents continue to be an important, though sometimes overlooked, tool in the patent portfolios of many companies, especially those in the consumer products arena.  As with other recent patent design suits, the suits discussed above were brought by American companies.  Whether foreign companies will also choose to assert their own design patents with greater frequency in the future remains to be seen.


Friday
Dec232011

Apple v. Samsung: Apple is denied Preliminary Injunction against the 10.1N in Germany 

Following our prior post regarding Apple's request for preliminary injunction, Reuters reported on December 22, 2011, that Judge Johanna Brueckner-Hofmann stated that, "[a]ccording to the court's assessment, the defendant has moved away sufficiently from the legally protected design." A final verdict is expected in February.