Keurig v. Rogers: Dismissed on Summary Judgment

Following up on our earlier post, Keurig’s suit against Rogers Family Co. (“Rogers”) has been dismissed on summary judgment.  The district court granted Rogers’ motion for summary judgment of non-infringement of U.S. Patent No. D502,362 and two utility patents.

In a Memorandum and Order on Summary Judgment (“Order”), the court compared the accused product with the claimed design in order to determine if the two are plainly dissimilar.  The following is a comparison provided on page 12 of the Order:

Although no written construction of the design patent claim was given in its Markman ruling, the court did analyze several features of the claimed design on summary judgment to determine if they were functional.  The court reviewed affidavits filed in support of summary judgment briefing and provided comments on the experts’ opinions.  Regarding the round shape of the lid, the tapered shape of the filter, and depending skirt, Keurig’s expert opined that alternative shapes could have been used for the design.  Regarding the tapered shape, “the Court finds that general tapered shape of the filter does ‘[a]ffect the quality of the [beverage cartridge],’ and therefore is a functional aspect of the patented design that cannot be considered in the comparison.” Order at 16.  However, the court further noted that “the specific shape of the tapered filer remains a relevant point of comparison.” (emphasis in original).  The remaining aspects were treated as ornamental.

After a detailed comparison that highlighted certain similarities and differences between the claimed design and the accused product, the court found that the overall designs are plainly dissimilar.  The court stated that the filter in the accused produce is more or less hemispherical and the claimed filter is shaped like a triangular prism.  This difference was important as the filter was found by the court to be the most prominent feature.  The court noted that, “[i]n contrast to Crocs, the Court is confident that ‘[i]f the claimed design and the accused designs were [scrubbed of all identifying logos] and mixed up randomly ... an ordinary observer could [in fact] properly restore them to their original order without very careful and prolonged effort.’” Order at 17-18.  The court granted Rogers’ motion for summary judgment of non-infringement of U.S. Patent No. D502,362.

IP Chat Channel - Design Patent Prosecution: Advanced Topics

On May 23, 2013, the IPO held a webinar on its IP Chat Channel called "Design Patent Prosecution: Advanced Topics," hosted by Pamela Sherrid.

Katie Maksym, design patent manager for Nike, Inc. first presented "Best Practice Tips from the Field of Play." Ms. Maksym highlighted the role of infringement awareness as a source of information to draft claims.

Christopher V. Carani, Esq., partner at McAndrew, Held & Malloy, Ltd. presented "‘Design Patent Prosecution: Advanced Topics," covering prosecution techniques.  Mr. Carani discussed including line representations with broken or indeterminate break lines, a well as the advantages and disadvantages of filing multiple applications, continuations, and one application with multiple embodiments.

Joel Sincavage, supervisory design patent examiner at the USPTO, and Teaching Quality Assurance specialist, presented "Written Description Requirement in Designs." In reference to concerns expressed by practitioners at Design Day 2013, Mr. Sincavage indicated that the USPTO was currently making arrangements for a town hall or roundtable type meeting to discuss the written description requirement.

In re Owens, 710 F.3d 1362 (Fed Circ 2013) and Munchkin, Inc. v. Luv N’ Care, Ltd, Case IPR 2013 -0082 (USPTO 2013) were discussed by both Mr. Carani and Mr. Sincavage.

A Q&A session followed the presentations.

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.

Hague Agreement (Guest Post)

Further to our prior coverage of the implementation of the Hague Agreement, we are pleased to publish the following from Audrey Pastoret, a guest of ours from France.

The Patent Law Treaties Implementation Act of 2012 signed by President Obama on December 18, 2012 implements the Hague Agreement in the United States. It is intended to provide industrial designs with protection in states and governmental organizations parties to this arrangement through a single international application effected at the WIPO. Before the Hague Agreement, an application had to be filed in every country where protection was desired, resulting in several applications being filed for a single design patent. Under the Hague agreement a single application can provide protection in multiple countries.

An international application under the Hague Agreement does not require a prior national deposit, and can be filed either at the WIPO or at the national office. The application may be in English, French or Spanish.

When filing an application under the Hague Agreement, one must either be a citizen of a Contracting Party or a Member State of an international organization that is a Contracting Party. Alternatively, one must have either a residence or an habitual residence on the territory of a Contracting Party, and one must have an effective industrial or commercial establishment on the territory of a Contracting Party.

The Hague Agreement consists of three International Treaties, but since 2010 only two of them are still enforced:  The Geneva Act (1999) and The Hague Act (1960). (The London Act of 1934 was frozen in 2012).

The Geneva Act and the Hague Act are independent from each other, such that one country can join one or both. Accordingly, when asking for protection under the Hague Agreement in several countries, it is crucial to confirm that those countries are parties to the same Act. The United States are party to the Geneva Act but not the Hague Act. Consequently, the United States can ask protection in countries party to the same act (the Geneva Act) but cannot ask for protection in a country which is party only to the Hague act.

The Hague Agreement increases the protection duration for design patents in the US from 14 years to 15 years. This increase in protection duration is based on an initial 5 year protection which may be renewed for an additional 5 years, every 5 years until the total protection is reached, in countries where protection is desired. The total duration of design patent protection may vary according to each country’s rules.

Under the Hague agreement, an international application may contain a maximum of 100 Designs. All designs must belong to the same Locarno classification, which is an International Classification for Industrial Designs. Application costs are expected to increase with the number of designs claimed.

Under the Hague Agreement, publication takes place six months after the date of the international registration. However, an applicant may request immediate publication or request a deferment of publication.

Oakley Inc. v. Hire Order, Ltd.

In Oakley Inc. v. Hire Order, Ltd. (3:12-cv-02346-DMS-WMC), the U.S. District Court of the Southern District of California issued an Order on March 28, 2013, denying Hire’s motion for partial summary judgment of non-infringement.

As shown in Exhibit B of the Complaint filed on September 26, 2012, Oakley, Inc. (Oakley) issued a letter to Hire Order, Ltd (Hire) on June 22, 2012, demanding that Hire cease sales of its Sportsman Eyewear video recording system.

The Complaint alleged willful and intentional infringement of Oakley's D523,461 (D461) Eyeglass Component design patent, requested a preliminary and permanent injunction, and requested that Hire pay damages for infringing acts and treble damages, profits from the alleged infringement, attorney fees and costs associated with this action.

Hire moved for partial summary judgment of non-infringement, while Oakley asserted that a genuine issue of material fact made the summary judgment inappropriate.

Reproduced below are Figure 1 of the D461 patent (top) and an image of an alleged Sportsman Eyewear infringing product (bottom).  The Court stated in the Factual Background section of the Order that the design of the D461 patent consisted of “an eyeglass frame with bulbous areas on each arm and buttons on each bulbous area.  The frames are curved and have ridges across the front bridge.  There is a dip in the nose bridge, which consists of an x-shaped piece that sits on the nose.”

As re-iterated by the Court, in determining infringement or non-infringement, the claim must first be properly construed to determine scope and meaning, before the properly construed claim can be compared to the accused device.

In addressing the first question, the Court declined to issue a verbal description of the D461 Patent, in accordance with the Supreme Court position that a design is better represented by an illustration “than it could be by any description.” The Court agreed with Oakley that the D461 patent should be construed as the ornamental design for an eyeglass component, as shown and described in Figures 1 through 6 of the patent.

In addressing the second question, the Court relied on the ordinary observer test to determine whether there was infringement.

As reported in the Order, Hire argued that its Sportsman Eyewear had “smooth arms while the arms on the claimed designs have a claw or rib-like pattern.” Hire further argued that buttons on the arms of the accused product were in different locations from the claimed design, and plain instead of ornate on the claimed design.  Hire also argued with respect to the position of the USB input port, and the presence of an additional Micro-SD input.  Finally, Hire stated that its Sportsman Eyewear lacked a scoop on the top of the nose bridge and an x-shaped protrusion on the nose bridge front.

As stated in the Order, Oakley asserted an “overwhelming similarity” between the accused product and claimed design, “or at a minimum, a question of fact sufficient to defeat summary judgment.”

The Court agreed with Oakley that Hire had not met its burden of proof to show non-infringement, since “‘mere differences of lines in the drawing or sketch … or slight variances in configuration … will not destroy the substantial identity,’” citing Egyptian Goddess, 543 F.3d at 670 (quoting Gorham, 81 U.S. at 625-27).

The Court stated that when viewed as a whole there was at least a genuine issue of material fact whether the accused product infringes the claimed design.