Entries in design patent (9)


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.


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. 


Apple v. Samsung: ITC Initial Determination

On October 24, 2012, the ITC issued an "Initial Determination on Violation of Section 337," in Inv. No. 337-TA-796.  In this case, Apple alleged Samsung had imported various infringing devices (smartphones and tablets) into the U.S. 

In summary, ALJ Tomas B. Pender determined that a violation of Section 337 of the Tariff Act of 1930 has been found in connection with several utility patents and U.S. Design Patent No. D618,678 (Fig. 1 of which is reproduced below).  ALJ Pender also concluded that this patent is not invalid.

ALJ Pender also determined that no violation of Section 337 was found in connection with U.S. Design Patent No. D558,757 (Figs. 3-4 of which is reproduced below), and concluded that this patent is not invalid. 


Apple v. Samsung: Apple requests injunctions

Following the jury verdict, Apple has requested an injunction of seven Samsung phones based on design patent infringement of D677 and D305.