Yummie Tummie Sues Spanx for Design Patent Infringement

On April 2, 2013, Yummie Tummie sued fellow shapewear maker Spanx in the U.S. District Court for the Southern District of New York for patent infringement of six of its design patents.  The suit follows Yummie Tummie’s cease and desist letter from earlier this year and Spanx’s own complaint for declaratory judgment of non-infringement against Yummie Tummie filed last month in the U.S. District Court for the Northern District of Georgia. 

In its complaint (Case 1:13-cv-02157-AKH), Yummie Tummie asserted that Spanx’s products, including “The Total Taming Tank A226764,” the “Top This Tank Style 1847,” and “The Top This Cami Style 1846,” infringe the following U.S. design patents: D606,285; D616,627; D622,477; D623,377; D665,558; and D666,384.  The complaint did not include exhibits illustrating Spanx’s at-issue products, but Figures 1 and 3 of Yummie Tummie Design Patent D606,285 are provided below for visual context.

Yummie Tummie seeks damages and/or a disgorgement of Spanx’s total profits as well as its customers’ profits for patent infringement.  Yummie Tummie also seeks an injunction preventing Spanx from making, using, selling, or offering to sell, and from contributing to and inducing others to make, use, sell, or offer to sell Yummie Tummie’s patented designs without permission.

Beats sues Yamaha for trade dress and design patent infringement

Beats Electronics, LLC (Beats) filed a complaint against Yamaha Corporation of America (Yamaha) on February 6, 2013, in the Central District of California, alleging infringement of Beats’ design patents and trade dress.  The complaint includes a request that the court enter a judgment that requires Yamaha to deliver to Beats, for destruction, all of the alleged infringing headphones and any materials which depict the alleged infringing headphones.  The complaint demands a jury trial on all issues.

According to the complaint, counsel for Beats notified Yamaha on November 30, 2012, of its belief that the Yamaha Pro 300, Yamaha Pro 400 and Yamaha Pro 500 headphones infringe Beats patents and Beats’ trade dress rights, and the complaint alleges that the Pro 300, Pro 400 and Pro 500 headphones are “knock-offs of Beats’ world-famous ‘Studio,’ ‘Solo,’ and 'Wireless’ model headphones.”

The complaint alleges that Yamaha has “infringed Beats’ famous and distinctive trade dress and committed unfair competition,” and that Yamaha has infringed Beats’ design patents D632,668 and D552,077, which respectively claim an audio listening system and a headphone.

Fig. 8 of D552,077, Fig. 1 of D632,668 and an image of one of the alleged infringing Yamaha headphones from Exhibit E of the complaint are reproduced below, respectively, left to right.

Exhibit F of the complaint, which is titled “BEATS SOLO vs. YAMAHA 300,” is reproduced below.

In the complaint, Beats alleges that “[c]onsumers appreciated the design, as well as the sound quality, of the Beats Headphones and began wearing the Beats Headphones around their necks as a fashion accessory even when not listening to music.” Beats further alleges that “Beats’ Trade Dress rights in these products consists [sic] of the overall appearance of the shape and design of the headphones, including the size, proportion and curvature of the headband, yoke and earcups,” citing to Exhibits A-C of the complaint.

The complaint further alleges that the following images are advertisements that have been displayed by Yamaha or its affiliate on the Internet, and argues that these images “further show Defendant’s intention to copy the distinctive design of Beats’ headphones and/or its intention to trade off of the goodwill associated with Beats’ product appearance.” 

Federal Circuit Reverses Dismissal in Hall v. Bed Bath & Beyond, Inc.

The Federal Circuit reversed the district court’s sua sponte dismissal of a complaint filed by Mr. Robert J. Hall for patent infringement and other claims.  The Federal Circuit opinion can be found here.

Mr. Hall accused Bed Bath & Beyond of infringing U.S. Design Patent No. D596,439 entitled “Towel Tote.” Fig. 1 from D596,439 is reproduced below.

Mr. Hall’s complaint identified the patent, showed the patented design, and described the accused towel.  However, the district court took the position that the complaint should have included answers to question such as: “what is it about Plaintiff’s towel that he claims is ‘new, original and ornamental,’ meriting the protection of a design patent?” Opinion at 5.  The district court dismissed the complaint for failure to state a claim on which relief can be granted.

In vacating the district court’s dismissal, the Federal Circuit noted that there are five necessary elements of a patent infringement pleading.  These required elements include:  (i) alleging ownership of the patent, (ii) naming each defendant, (iii) citing the patent that is allegedly infringed, (iv) stating the means by which the defendant allegedly infringes, and (v) pointing to the sections of the patent law invoked.  Opinion at 4.  The Federal Circuit pointed out that Mr. Hall presented a lengthy complaint and plausibly satisfied each of these requirements.  Opinion at 6-8. 

The Federal Circuit found that the district court erred in requiring that the complaint identify the “new, original, and ornamental” aspects of the claimed design, and pointed out that in Egyptian Goddess the Federal Circuit eliminated the “point of novelty” step when determining infringement of a design patent.  Opinion at 7.  Further, the Federal Circuit stated that “claim construction is not an essential element of a patent infringement complaint.” Opinion at 5.

Judge Lourie wrote a dissenting opinion.  Despite pointing out flaws in the district court’s analysis, Judge Lourie’s dissent took the position that the district court’s analysis was not sufficiently faulty to justify vacation of its dismissal and that the plaintiff should have accepted the court’s invitation to replead its patent count.  Dissent at 3. 

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.