Digest of new and closed design patent cases from Feb. 6 to Mar. 16, 2012

We have found it helpful, and interesting, to track newly filed and closed design patent cases on a weekly basis.  In hope that readers of our Protecting Designs Blog might benefit as well, we have tabulated our search results over the period from February 6 to March 16, 2012, and posted them here.

During this six week period, we identified 15 newly filed cases and 20 closed cases that assert a cause of action involving a design patent.  Of the closed cases identified, the average pendency of the litigation was 0.6 years, where the maximum and minimum pendencies were 1.6 years and 4 days, respectively.


Oakley drops utility patent claims and proceeds with design claim following Markman hearing; court declines to construe the design claim

On March 5, 2012, Oakley entered into a Covenant Not to Sue either Predator Outdoor Products or Hunter Specialties under U.S. utility patent 5,387,949 (“the ‘949 patent”).  The covenant not to sue was executed on the same day as the Markman hearing in the matter of Oakley v. Predator Outdoor Products et al. (case no. 8:2011-cv-00456, in the U.S. District Court for the Central District of California). 

As we previously reported, Oakley originally alleged infringement of both the ‘949 patent and the U.S. design patent D523,461 (“the D461 patent”).  However, as a result of the covenant not to sue under the utility patent, the D461 patent is currently the only remaining patent at issue in this case. 

The D461 patent claims “the ornamental design for an eyeglass component, as shown and described,” below.


Figure 1 of the D461 patent

In his March 7, 2012, Claim Construction Order (hereinafter “Order”), District Judge James Selna provided detailed reasoning for his decision not to construe the D461 patent claim, separately addressing issues of ambiguity, sufficiency of the description, and functionality.

First, the court addressed the defendants’ argument that the D461 patent is invalid because it is indefinite.  In particular, the defendants alleged that discrepancies in the number of control buttons on each ear stem rendered the D461 patent indefinite.  Order, page 3.  Relying on the Federal Circuit’s opinion in Antonious v. Spalding & Evenflo Co., No. 98-1478, 1999 WL 777450, at *8 (Fed. Cir. Aug. 31, 1999), the court concluded that “the inconsistencies in the drawings are minor,” and “[do] not rise to the level required to render the design indefinite.” Order, page 3.

Second, as to sufficiency of the description, the court recognized that the defendants’ proposed verbal construction of the D461 drawings were “thoughtful and accurate,” but concluded that “the depictions speak for themselves.”  Order, page 4.  The court relied on the Federal Circuit’s opinion in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc), in reasoning that “it has long been observed, and continues to be proven by examples such as the present one, that a design is better represented by an illustration than it could be by any description and a description would probably not be intelligible without the illustration.”  Order, page 4 (internal quotes omitted). 

Finally, the court provided a detailed discussion regarding the defendants’ arguments that certain features of the D461 patent were functional in nature and therefore not eligible for design patent protection.  In particular, the defendants alleged that “the enlarged rectangular portions of the left and right earstems (that are meant to contain . . . electronics) and the nose bridge (which is required to hold the eyeglasses on the wearer’s face) are functional.”  Order, page 4.

At the outset, the court stated that “[t]he conclusion that these features serve a defined utilitarian purpose is not dispositive as to whether the features are functional in the sense that they are not entitled to design patent protection.”  Order, page 5.  Instead, the court clarified that “the design of a useful article is deemed to be functional when the appearance of the claimed design is dictated by the use or purpose of the article.  Order, page 5 (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)). 

Interestingly, in dismissing the defendants’ functionality arguments, the court pointed to the defendants’ own utility patent applications to demonstrate “alternatives for accomplishing the functions of storing electronic components in eyewear and providing nose support for eyewear.”  Order, page 5.  Further, in concluding that no claim construction was necessary due to functionality, the court analogized the features in the D461 patent to those found not strictly functional in L.A. Gear and Rosco, Inc. v. Mirror Lite Co., 304 f.3d 1373, 1378-79 (Fed. Cir. 2002), and distinguished the facts of Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010), where the Federal Circuit concluded that design features were “purely functional elements.”  Order, page 6.


USPTO Proposes Dramatic Design Patent Fee Increases

The USPTO has proposed fee increases in addition to the already implemented 15% surcharge.

Concerning Design Patents, the proposal sets several modest fee increases, while others are quite substantial.  Namely, the proposed Design Patent Examination and Search Fees would each increase by several hundred dollars.  The following table compares current and proposed large entity fees.  The proposed small and micro entities fees are, respectively, 50% and 25% of the large entity fees.

Fee Item Current Proposed Percent Change
Filing Fee $ 250 $ 260 4 %
Examination Fee $ 160 $ 500 213 %
Search Fee $ 120 $ 420 250 %
Issue Fee $ 990 $ 1,020 3 %
Extension Fees Current Proposed Percent Change
First Month $ 150 $ 200 33 %
Second Month $ 560 $ 600 7 %
Third Month $ 1,270 $ 1,400 10 %
Fourth Month $ 1,980 $ 2,200 11 %
Fifth Month $ 2,690 $ 3,000 12 %

Full listing of proposed fee increases (pdf)

Obviously, the proposed fee increases will cause a substantial increase in Design Patent filing costs.  The current Filing, Examination and Search fees total $ 530, whereas the proposed fees total $ 1,180, more than twice the current fees.


Lindby Custom successfully enforces a design for motorcycle parts, but would the proposed PARTS legislation have affected the court’s ruling?

On February 15, 2012, the U.S. District Court for the Central District of California entered Default Judgment in the matter of Lindby Custom, Inc. v. AMI Group (case no. 8:10-cv-01779).  In its Complaint, Lindby Custom alleged infringement of U.S. Design Patent D548,142 (“the D142 patent”), in addition to trade dress and unfair competition claims.

The D142 patent claims “the ornamental design for the combined engine guard and highway peg” for motorcycles, shown below.

In its Default Judgment order, the court ordered AMI to pay Lindby Custom compensatory damages of $285,000, and attorneys’ fees and costs of $9,800, in addition to ordering a permanent injunction against continued infringement.

The court’s ruling follows less than two weeks after introduction of a bill in Congress, H.R. 3889, intended to create exceptions to acts of design patent infringement under 35 USC § 271 for certain component parts of motor vehicles, as we previously reported.  In turn, we thought it would be interesting to consider whether the proposed legislation could have affected the Lindby Custom v. AMI Group ruling, had the legislation been in effect.

As a threshold question we considered whether the Lindby case involves:

"a design patent that claims a component part of a motor vehicle as originally manufactured.

H.R. 3889 (emphasis added).  The answer to this question may depend on an issue of statutory construction. 

First, if the clause "as originally manufactured" modifies only the term "a motor vehicle," then the proposed legislation might only apply to design patents that claim parts installed on a motor vehicle as it leaves the manufacturer's assembly line.  Accordingly, under this first interpretation, the proposed legislation might not apply to the D142 patent because there is no evidence that Lindby Custom provided engine guards for "motor vehicle[s] as originally manufactured."

However, in the alternative, if the clause "as originally manufactured" modifies the term "a component part," then the proposed legislation might apply to all motor vehicle component parts, as the component parts themselves are originally manufactured.  Under this second interpretation, the proposed legislation would likely apply more broadly to include design patents for aftermarket parts, such as the D142 patent, even if those parts were never installed on a motor vehicle as part of that motor vehicle's original manufacture.  Thus, under this second interpretation, the proposed legislation may have acted to diminish the damages award in the Lindby case by providing an exception to infringement for acts intended "for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured."  H.R. 3889.


Oakley concludes one successful enforcement suit and continues another

On February 9, 2012, Oakley, Inc., concluded a successful suit to enforce eyeglass utility and design patents in the U.S. District Court for the Southern District of California (Oakley v. Talitor Far East Co. Ltd et al., case no. 3:2011-cv-01305).  The complaint, filed in June of 2011, alleged infringement of Oakley’s design patent, U.S. Patent No. D523,461 (“ the D461 patent”), and utility patent, U.S Patent No. 5,387,949 (“the ‘949 patent”), by eleven named defendants.

The D461 patent claims the ornamental design for an eyeglass component, as shown below.

At the close of litigation, eight defendants settled by agreeing to permanent injunctions against continued infringement.  Further, the court entered final judgment against one defendant, Nutech Trading USA, Inc., ordering a permanent injunction against continued infringement, payment of total profits from sales of infringing eyewear, and payment of the plaintiff’s costs and reasonable attorneys’ fees.  Order, 3:2011-cv-01305, January 31, 2012.

Oakley continues to pursue enforcement of the D461 patent and the ‘949 patent in another suit, Oakley v. Predator Outdoor Products et al. (case no. 8:2011-cv-00456), currently pending before the U.S. District Court for the Central District of California.  Parties to this ongoing suit filed claim construction briefs on February 6, 2012, following a series of settlement conferences.

Previously, litigation in the Central District of California case was voluntarily stayed to conclude the declaratory judgment action, Hunter’s Specialties et al. v. Oakley (case no. 1:2011-cv-00034), filed in the U.S. District Court for the Northern District of Iowa.  Another declaratory judgment action, Predator Outdoor Products v. Oakley (case no. 5:2011-cv-01975), filed in the U.S. District Court for the Eastern District of Pennsylvania, which we previously reported, was voluntarily dismissed to pursue the combined declaratory judgment action with Hunter’s Specialties in Iowa.  Chief Judge Linda Reade, of the Northern District of Iowa, dismissed the joint declaratory judgment action “in deference to the parallel action in the United States District Court for the Central District of California,” reasoning that the declaratory judgment action was merely “forum shopping in the form of [an] anticipatory, declaratory judgment suit[].”  Order, p. 14-15, case no. 1:2011-cv-00034, August 2, 2011.