Digest of new and closed design patent cases from Mar. 19 to April 6, 2012

In light of the positive response we received from our earlier Design Patent Digest post, we decided to post another.  A table of newly filed and closed design patent cases from March 19, 2012, to April 6, 2012, including a handful of earlier cases not identified in our previous search, is posted here.  Over this three week period, we identified 20 new cases and 10 closed cases involving a design patent.

Some cases that we found particularly interesting are mentioned below.

The footwear design patent infringement suit, Skechers USA v. Children’s Place, which we previously reported, was dismissed without prejudice on March 28, 2012, following a settlement agreement.

Littel Fuse, Inc. filed suit in the Eastern District of Michigan alleging infringement of utility and design patents for electrical fuses.  Links to the patents at issue are included below.

D575,746 Blade Fuse and Fuse Element therefor

D584,239 Blade Fuse Element

8,077,007 Blade Fuse

7,928,827 Blade Fuse

Frito-Lay filed suit in the Eastern District of Texas alleging infringement of utility and design patents for apparatus and methods directed to making bowl-shaped tortilla chips.  The Eastern District of Arkansas dismissed the defendants’ declaratory judgment action against Frito-Lay after the Eastern District of Texas ruled that the defendants were subject to its jurisdiction and that venue was proper in Texas.  Links to the patents at issue are included below.

D459,853 Snack Piece Mold

6,610,344 Process for making a shaped snack chip

6,592,923 System and method for molding a snack chip

6,638,553 System and method for monolayer alignment snack chip transfer

www.protectingdesigns.com

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.

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.

NIKE files a complaint alleging footwear design infringement

NIKE, Inc. filed a complaint against QiLoo International Limited, a Chinese company, on February 6, 2012 (case number 2:2012-cv-00191 in the U.S. District Court for the District of Nevada), alleging infringement of 23 U.S. design patents, listed below.

D361,884        D500,585        D546,541        D578,294

D429,877        D500,917        D547,541        D579,186

D462,830        D523,618        D555,332        D580,636

D475,523        D524,028        D573,338        D580,646

D494,353        D524,529        D573,339        D586,548

D499,247        D532,600        D575,046

All of the patents asserted are directed to shoe designs, and the patent issue dates range from 1995 to 2009.  Images of the allegedly infringing QiLoo footwear are shown below (on the right) next to a figure from the particular design patent asserted (on the left).

The complaint further alleges that QiLoo sold or offered to sell the allegedly infringing shoes at World Shoe Association (WSA) trade shows in Las Vegas, Nevada, and that NIKE hand delivered seven notices to QiLoo at those trade shows from 2007-2011 before bringing suit.

This complaint by NIKE follows less than a week after Skechers filed a complaint to enforce footwear design patents, and following Crocs’ successful enforcement of footwear design patents in both federal court and the International Trade Commission (ITC).