Entries in declaratory judgment (7)


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.


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.


Digest of new and closed design patent cases from April 9-20, 2012

Wal-Mart and Oakley were among the parties to 8 newly-filed cases and 5 closed cases involving design patents during the two-week period of April 9-20, 2012.  A tabulated summary of these cases is posted here.  Some cases that we found particularly interesting are mentioned below.

Oakley, Inc. filed suit against Great L&H Trading, Inc. in the Central District of California alleging infringement of eyewear design and utility patents.  On the same day, Great L&H Trading filed a corresponding declaratory judgment action in the Southern District of New York.  This new case follows other Oakley eyewear design infringement suits that we previously reported on 02/10/12, 02/16/12, and 03/12/12.  Links to the patents at issue in this case are listed below.

D420,036        D622,755        D581,443

D581,444        D397,350        D399,866

D554,689        D404,754       

5,387,949       5,638,145 



Vinum Corp. and Oenaphilla, Inc. settled a lawsuit involving a combined bottle "aerator, filter, pourer, re-corker and stopper, all designed into one unit," as shown to the left.  Vinum's complaint alleged that Oenaphilla's Tappo Pour product infringed Vinum's D437,782 patent claiming a design for a bottle stopper. 



Sheng Yang Metal Co. and Wal-Mart Stores settled a lawsuit involving tool handle designs, shown below.  Shen Yang Metal's complaint alleged that Wal-Mart infringed two of its patents, D483644 and D486717, claiming designs for tool handles.




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




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.