Predator Outdoor Products, LLC v. Oakley, Inc.

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

i-Kam Extreme

Garmin Ltd. v. Bryton Inc.

Garmin filed suit against Bryton in a Kansas federal court, claiming that Bryton devices for cycling enthusiasts infringe design and utility patents held by Garmin.  The design patent in suit is U.S. Patent No. D632,984 (hereinafter “the ‘984 patent”) and is titled “Electronic Device.”  Figure 1, which is a front perspective view, and Figure 2, which is a rear perspective view, of the ‘984 patent are reproduced below.

Bryton’s accused products include the Rider 30 cycling computer and the Rider 50 cycling computer, which are shown below.

In the complaint, Garmin asks the court for a preliminary injunction against Bryton, blocking the sale of the company’s products in the U.S.

Chrysler’s ITC Complaint alleging Design Patent Infringement of a Concept Vehicle Results in Settlement, Cease and Desist Orders

Chrysler’s ITC Complaint alleging Design Patent Infringement of a Concept Vehicle Results in Settlement, Cease and Desist Orders and Limited Exclusion Orders

See our posting on the ITC 337 Law Blog of March 16, 2011.

The Jeep Hurricane is a 4x4 concept vehicle which was unveiled at the North American International Auto Show in Detroit, Michigan in 2005, by Jeep, a division of Chrysler Group LLC.  Chrysler obtained U.S. Design Patent No. D513,395 (the ‘395 patent) on January 3, 2006, which is directed to an automobile body corresponding to the Jeep Hurricane.

Chrysler filed a 337 complaint in the ITC regarding certain automotive vehicles on May 14, 2010 (see our ITC 337 Law Blog posting of May 18, 2010), and the ITC instituted an investigation (337-TA-722) regarding certain automotive vehicles on June 11, 2010 (see our ITC 337 Law Blog posting of June 15, 2010).

On October 12, 2010, Chrysler and respondents including Xingyue Group Co., Ltd. filed an amended joint motion to terminate the pending investigation on the basis of a consent order, and the ALJ issued an order on October 27, 2010, granting the joint motion for termination.  The joint motion to terminate was based on a settlement agreement these respondents will not import, sell, etc. the accused XYJK800 vehicle manufactured by Xingyue, which was alleged to infringe the ‘395 patent.

On October 29, 2010, Chrysler filed declarations requesting immediate relief against the then defaulting respondents (Vehicles Online, Inc. and Shanghai Tandem).  Having determined that the statutory requirements were met, the ITC issued a notice ordering relief on March 10, 2011. 

The relief included (1) cease and desist orders against Vehicles Online, Inc. and Shanghai Tandem concerning automotive vehicles and designs therefor that infringe the ‘395 patent, and (2) a limited exclusion order prohibiting unlicensed entry of automotive vehicles and designs therefor that infringe the ‘395 patent, which are manufactured abroad or imported by or on behalf of Shanghai Tandem (namely, the accused Tandem TDUV800-2).  Since no other issues remained pending, the ITC terminated the investigation.

Figure 1 of U.S. D513,395

Jeep Hurricane (www.jeep.com)

Alleged Infringer Xingyue XYJK800 (source)

Alleged Infringer Tandem TDUV800-2 (source)

Bell Helicopter Awarded Large Judgment Against No-Show Defendant

Bell Helicopter was recently awarded $22.5 million in a trade dress infringement suit against the government of Iran.  Judge Urbina, writing for the U.S. District Court for the District of Columbia, handed down the award two years after entering a default judgment against the government of Iran.  Iran failed to respond to Bell’s complaint or enter an appearance in court, resulting in the default judgment.

Bell’s trade dress suit related to helicopter designs which were also protected, in part, by three design patents: D388,048, D375,077 and D363,054.  Iran was accused of manufacturing at least thirteen counterfeit helicopter designs beginning in 2001 and promoting the counterfeit helicopters at an air show held annually in Iran.  Although two of the design patents in question have expired, Bell succeeded in its claim for trade dress infringement by demonstrating to the satisfaction of the court that its helicopter designs are inherently distinctive and have acquired secondary meaning since being first introduced in 1966.  The court also agreed with Bell that Iran’s designs are “confusingly similar” to that of Bell and that Bell’s designs are non-functional and ornamental.  See Opinion, at page 6. 

In several recent opinions involving design patents, judges have articulated why and how a claimed design is similar to an accused design, including reasons for why particular features were considered functional or non-functional.  In these cases, courts being have found many features of a design to be functional.  See, for example, Richardson v. Stanley Works, 597 F.3d 1288 (Fed. Cir. 2010).  Although the functionality analysis performed by judges can be different for trade dress claims as compared to design patent claims, in this case, perhaps because of Iran’s failure to answer or present any counter-evidence, the court did not perform any functionality analysis or find any features of Bell’s helicopter design to be functional.  The opinion also contains no side-by-side or element-by-element comparisons of the competing designs to support the finding that the designs are confusingly similar. 

The District Court’s opinion can be found at:  https://ecf.dcd.uscourts.gov/cgi-bin/show_public_doc?2006cv1694-17

Fig. 1 of U.S. Design Patent No. D375,077

Sam Adams Brewer Asks ITC To Block Beer Glasses

As reported on Oblon, Spivak’s ITC Blog, Boston Beer Corporation (“Boston Beer”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

Boston Beer, which is a subsidiary of the brewer of Samuel Adams beer, alleges that 1 Source Signature Glassware, Inc., di Sciacca Co., and San Tan Brewing Co. (collectively, the “Proposed Respondents”) — all of Chandler, Arizona — unlawfully import into the U.S. and/or sell within the U.S. after importation certain glassware that infringes U.S. Patent Nos. D582,213 and D569,189 (collectively, the “asserted patents”).

The following is a comparison from the complaint of the San Tan glassware that is alleged to infringe U.S. Patent Nos. D582,213 and D569,189.