Friday
Mar142014

Mulch v. Novel - Request for Declaratory Judgment

International Mulch Company, Inc. (Mulch) filed a complaint requesting declaratory judgment against Novel Ideas, Inc. (Novel) in the Eastern District of Missouri Eastern Division on March 11, 2014 (4-14-cv-00446).

In the complaint, Mulch requested a Declaratory Judgment of patent non-infringement and invalidity of two design patents owned by Novel, US D640,268 (’268) and US D654,191 (’191), both directed to flexible landscape edging.

Mulch stated that it began selling a lawn edging product to Lowe’s, and that Novel allegedly took the position that Mulch’s lawn edging product infringed the ’268 and ’191 patents.  Mulch further stated it had informed Novel that its product did not infringe Novel’s patents, and argued the ornamental design of their product differed from Novel’s patented design due to the product having an “appearance of variable sized cobblestones,” “a squared-off top,” “three holes for stakes,” and a “rounded inside corner.”

Figure 1 of the ‘268 patent is reproduced below:

In the complaint, Mulch stated Novel had allegedly “on information and belief, communicated directly to Lowe’s, taking the position that the [Mulch] lawn edging product being sold by Lowe’s infringe[d] the 268 Patent and the 191 Patent.” Mulch declared “apprehension that Novel will commence litigation” against Mulch and/or Lowe’s.

Mulch argued non-infringement of both the ’268 and ’191 patents, and stated that the alleged allegations of patent infringement “have placed a cloud over [Mulch’s] business, … are likely to cause [Mulch] to lose revenues and business opportunities, … and will likely cause irreparable injury to [Mulch].” Mulch further argued invalidity of both the ’268 and ’191 patents “due to functionality.”

In its prayer for relief, Mulch requested that Novel be prevented from “interfer[ing] in any way with [Mulch’s] manufacture, use, offer for sale, or sale of [Mulch’s] lawn edging product. A trial by jury was requested.

This case is ongoing.

Monday
Mar102014

Interim Rule Regarding Continued Prosecution Applications

The United States Patent and Trademark Office (Office) has adopted an interim rule, effective March 5, 2014, pertaining to Continued Prosecution Applications (CPAs), which are only available for design patent applications.

A CPA is typically filed when prosecution on the merits is closed in a design patent application.  For example, after the Examiner issues a final rejection in a design application, the Applicant may file a CPA in order to continue prosecution in front of the Examiner, instead of appealing the final rejection to the Patent Trial and Appeals Board.  A Request for Continued Examination (RCE) is not allowed in a design patent application.

The interim rule permits the filing of a CPA even if the prior design application does not contain the inventor's declaration if the CPA is filed on or after September 16, 2012, and the prior design application contains an application data sheet indicating the name, residence, and mailing address of each inventor.

The Leahy-Smith America Invents Act (AIA) generally revised and streamlined the requirements for the inventor's declaration.  In implementing the AIA inventor’s declaration provisions, the Office provided that an applicant may postpone the filing of the inventor’s declaration until allowance if the applicant provides an application data sheet indicating the name, residence, and mailing address of each inventor.

However, the rules pertaining to CPAs still required that the prior design application of a CPA be complete, which required that the prior design application contain the inventor's declaration.  The interim rule eliminates this requirement for CPAs in order to align CPA practice with the general provisions of the AIA.  Under the new rules, applicants no longer need to file the inventor's declaration in a prior design application in order to file a CPA of that application.

As a side note, the Office found "good cause to adopt the changes in this interim rule without prior notice and an opportunity for public comment, as such procedures are contrary to the public interest."

Tuesday
Feb252014

Skyline Design Patent Complaints

Skyline USA, Inc. (Skyline) recently filed two complaints asserting infringement of a design patent directed to a combined flashlight and stun gun.

In the first complaint filed February 7, 2014, Skyline alleged infringement by Cutting Edge Products, Inc. (Cutting Edge), in the Middle District of Florida, Orlando division (6:14-cv-212-ORL-36GJK).

The complaint relates to Design Patent No. D671,249 (‘249 patent), which issued November 20, 2012, and claimed a combined flashlight and stun gun. Figure 1 of the ‘249 patent, as shown in the complaint, is reproduced below.

In the complaint, Skyline alleges Cutting Edge offered to sell, and sold, combined flashlights and stun guns within the scope of the ‘249 patent.  Skyline further alleged the accused product shared the "distinctive overall appearance, which includes without limitation a scalloped bezel and distinctive handle" shown in the ‘249 patent.

Skyline asserts willful infringement by Cutting Edge of the ‘249 patent.  A representation of the alleged infringing Cutting Edge Product, as shown in the complaint, is reproduced below.

Skyline requested treble damages, an award of attorney fees, as well as prejudgment and post judgment costs.  Skyline also demands Cutting Edge be permanently enjoined from infringing the ‘249 patent.

Skyline filed a similar second complaint February 7, 2014, alleging infringement by M.A.S. Ga LLC d/b/a/ S&D Wholesale (S&D Wholesale), in the Middle District of Florida, Orlando division (6:14-CV-210-ORE-28K), regarding the ‘249 patent.

The complaint includes a side by side comparison of the ‘249 patent and of the S&D Wholesale product, and alleges the two share a "distinctive overall appearance, which includes without limitation a scalloped bezel and distinctive handle." A rear elevational view and a bottom plan view of the ‘249 patent and accused S&D Wholesale product, as shown in the complaint, are reproduced below.

Skyline asserts willful infringement by S&D Wholesale of the ‘249 patent, and made requests identical to those in its complaint against Cutting Edge.

Both of these cases are ongoing.

Tuesday
Feb112014

Gillette Design Patent Enforcement

Over the past 6 months the Gillette Company (Gillette) has filed two different complaints asserting infringement of numerous design patents to protect several of its razor blade related products.  In the first case, Gillette recently obtained a consent judgment, illustrating the value of design patents in its patent portfolio.  The second case is ongoing.

First, on October 10, 2013, Gillette filed a complaint against BK Gifts, BK Razors, Brian Patrick, Kim Murry, and Zilo Store, Inc. (collectively, “Defendants”), in the Southern District of Ohio (Gillette Company v. BK Gifts, transferred to the Northern District of Ohio, Docket No. 3-13-cv-02241-1).

The suit related to the following six design patents, which Gillette asserted covered the “valuable, unique and distinctive ornamental distinctive and non-functional design” of their razors:

  • D415,315 (’315 patent), issued on October 12, 1999, claiming “the ornamental design for a razor cartridge,”
  • D422,751 (’751 patent), issued on April 11, 2000, claiming “the ornamental design for a razor blade cartridge,”
  • D430,023 (’023 patent), issued August 29, 2000, claiming “the ornamental design for a container,”
  • D440,874 (‘874 patent), issued April 24, 2001, claiming “the ornamental design for a container,”
  • D531,518 (’518 patent), issued on November 7, 2006, claiming “the ornamental design for a dispenser for razor cartridges,” and
  • D575,454 (’454 patent), issued on August 19, 2008, claiming “the ornamental design for a shaving blade unit.”

The ’315 patent is set to expire on October 12, 2013 and the ’751 and ’023 patent will expire in 2014.

Figure 1 of the ’751 patent, Figure 1 of the ’518 patent, and Figure 1 of the ’454 patent are shown below, respectively.

The Defendants allegedly copied these designs corresponding to Gillette’s Mach®, Fusion®, and/or Venus® razor blade cartridges, shaving blade units, dispensers, and shaving blade containers products.

Gillette stated that on August 12, 2013, it sent an e –mail to various e-mail addresses associated with BK Gifts, notifying BK entities of the infringement of Gillette’s’ intellectual property and design patent rights.  An alleged August 15, 2013, letter by Gillette further requested resolution of BK Gifts’ and BK Razors’ infringement of Gillette’s design patent and intellectual property rights, with copies of the ‘751 and ‘454 patents.  Gillette allegedly received no response to this letter.

Gillette stated that on July 21, 2013, it sent a letter to Zilo demanding that Zilo cease and desist from further infringement, including attachment of the ‘751 patent, ‘454 and 315 patents.  On August 7, 2013, Gillette allegedly received a response offering full cooperation, but the infringing products remained available for sale online.

In the complaint, Gillette claimed that an ordinary observer would be deceived by the substantial similarity between its patented designs and the products sold and/or offered for sale.  Accordingly, Gillette claimed that Defendants’ deliberate and willful actions in infringing the above-noted design patents caused and would continue to cause irreparable harm unless preliminarily and permanently enjoined.

A consent judgment dated January 22, 2014, noted that Gillette and the Defendants entered into Confidential Settlement Agreements, dated and effective as of January 15, 2014, resolving all disputes and claims between the parties, including past damages, costs and attorneys’ fees.

The ’751, ’454 and ’518 patents, referred to as “the Fusion and Mach Patents” were determined to be infringed, not invalid, and not unenforceable.  Injunctions were granted against the Defendants.

In the consent judgment, the Defendants admitted that “the Fusion and Mach Patents are valid and enforceable in all respects, and that the razor cartridges and cartridge containers sold by the BK Defendants as ‘comparable to’ Fusion or Mach razor cartridges, or otherwise advertised or sold by the BK Defendants as substitutes, alternatives, or replacements for Fusion of Mach razor cartridges and cartridge containers violated the applicable Fusion and Mach patents.”

The judgment further noted that the Defendants would “terminate all manufacture, offers for sale, sale, and use of its current razor cartridges and cartridge containers incorporating the designs protected by any and all of the Fusion and Mach patents, and are hereby permanently enjoined, in the absence of a license, from making, offering for sale, selling and using such products, and variations thereof, during the enforceable life of the Fusion and Mach Patents.”

Second, Gillette also filed a complaint on January 29, 2014, in the Southern District of Ohio (Docket No. 1:14-cv-89), against the Javitch Canfield Group (JCG) and PNL Ventures (PNL). Gillette alleged infringement of Gillette’s design patent rights, as protected by the D422,751 patent, seeking a preliminary and permanent injunction against continued infringement.  In the complaint, Gillette claimed that both JCG and PNL offered for sale on Amazon.com, and based a substantial component of their business on direct copies and near exact imitations of Gillette’s product as embodied in the design of the ’751 patent.

Gillette filed for injunctive relief and damages, individually and collectively for joint and several liability, and for willful infringement from both JCG and PNL.  Gillette further requested an assessment of Gillette’s damages and/or Defendant’s profits, an award of attorneys’ fees to Gillette. A trial by jury was demanded.  This case is ongoing.

Monday
Feb102014

USPTO PUBLISHES REQUEST FOR COMMENTS AND NOTICE OF ROUNDTABLE EVENT ON THE WRITTEN DESCRIPTION REQUIREMENT FOR DESIGN APPLICATIONS

On February 6, 2014, the USPTO published in 79 FR 7971

  1. a notice that it will be hosting a roundtable event on March 5, 2014, from 1:00 p.m. to 4:00 p.m.; and

  2. a request for written comments on the following topics for discussion at the roundtable event.  Registration is required to attend in-person or by webcast.  Requests for participation as a speaker must be made in writing by February 14, 2014.  The USPTO has also published additional information on its website.

The topics for written comments and discussion at the roundtable event include:

  1. Factors in Determining Whether an Amended/Continuation Design Claim Satisfies the Written Description Requirement; and
  2. Establishing Adequate Written Description Support in the Original Disclosure.

Specifically, the USPTO is seeking “comments on the application of the written description requirement where only a subset of elements of the original disclosure are shown using solid lines in an amendment or in a continuation application.” The request for comments derives from discussion during Design Day 2013.  Notably, however, the USPTO indicated that it “is not seeking comments on the issue of the introduction of boundary lines via amendment or in a continuation application, as addressed in In re Owens, 710 F.3d 1362 (Fed. Cir. 2013).”