On March 21, 2011, Predator Outdoor Products, LLC (“Predator”) filed suit against Oakley, Inc. (“Oakley”) in the U.S. District Court for the Eastern District of Pennsylvania. Predator’s Complaint seeks a declaratory judgment that Predator does not infringe any valid claim of U.S. patent no. 5,387,949 (“the ‘949 patent”) or U.S. D523,461 (“the D461 patent”).
Predator filed suit after receiving a letter from Oakley asserting that Predator’s i-Kam Extreme products infringe the ‘949 and D461 patents. Oakley’s letter further demanded that Predator “immediately cease” infringing the patents, demanded an accounting for the sales of all allegedly infringing products, and enclosed a draft Complaint against Predator.
This case provides another example of a patent holder obtaining design and utility patent protection on a product and then asserting both the design and utility patents against a competitor. The case further illustrates that an assertion of a design patent can give rise to a declaratory judgment action as with the assertion of a utility patent.
For reference, Fig. 1 of the D461 patent and one of the commercially available i-Kam Extreme glasses is shown below:
D461 Fig. 1