The Senate Judiciary Committee has approved S. 3523. The companion bill in the House, HR 2511, which was the subject of our prior post concerning the Innovative Design Protection and Piracy Prevention Act, is pending and has been referred to the Subcommittee on Intellectual Property, Competition and the Internet.
Entries in fashion designs (12)
Oakley drops utility patent claims and proceeds with design claim following Markman hearing; court declines to construe the design claim
On March 5, 2012, Oakley entered into a Covenant Not to Sue either Predator Outdoor Products or Hunter Specialties under U.S. utility patent 5,387,949 (“the ‘949 patent”). The covenant not to sue was executed on the same day as the Markman hearing in the matter of Oakley v. Predator Outdoor Products et al. (case no. 8:2011-cv-00456, in the U.S. District Court for the Central District of California).
As we previously reported, Oakley originally alleged infringement of both the ‘949 patent and the U.S. design patent D523,461 (“the D461 patent”). However, as a result of the covenant not to sue under the utility patent, the D461 patent is currently the only remaining patent at issue in this case.
The D461 patent claims “the ornamental design for an eyeglass component, as shown and described,” below.
Figure 1 of the D461 patent
In his March 7, 2012, Claim Construction Order (hereinafter “Order”), District Judge James Selna provided detailed reasoning for his decision not to construe the D461 patent claim, separately addressing issues of ambiguity, sufficiency of the description, and functionality.
First, the court addressed the defendants’ argument that the D461 patent is invalid because it is indefinite. In particular, the defendants alleged that discrepancies in the number of control buttons on each ear stem rendered the D461 patent indefinite. Order, page 3. Relying on the Federal Circuit’s opinion in Antonious v. Spalding & Evenflo Co., No. 98-1478, 1999 WL 777450, at *8 (Fed. Cir. Aug. 31, 1999), the court concluded that “the inconsistencies in the drawings are minor,” and “[do] not rise to the level required to render the design indefinite.” Order, page 3.
Second, as to sufficiency of the description, the court recognized that the defendants’ proposed verbal construction of the D461 drawings were “thoughtful and accurate,” but concluded that “the depictions speak for themselves.” Order, page 4. The court relied on the Federal Circuit’s opinion in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc), in reasoning that “it has long been observed, and continues to be proven by examples such as the present one, that a design is better represented by an illustration than it could be by any description and a description would probably not be intelligible without the illustration.” Order, page 4 (internal quotes omitted).
Finally, the court provided a detailed discussion regarding the defendants’ arguments that certain features of the D461 patent were functional in nature and therefore not eligible for design patent protection. In particular, the defendants alleged that “the enlarged rectangular portions of the left and right earstems (that are meant to contain . . . electronics) and the nose bridge (which is required to hold the eyeglasses on the wearer’s face) are functional.” Order, page 4.
At the outset, the court stated that “[t]he conclusion that these features serve a defined utilitarian purpose is not dispositive as to whether the features are functional in the sense that they are not entitled to design patent protection.” Order, page 5. Instead, the court clarified that “the design of a useful article is deemed to be functional when the appearance of the claimed design is dictated by the use or purpose of the article. Order, page 5 (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)).
Interestingly, in dismissing the defendants’ functionality arguments, the court pointed to the defendants’ own utility patent applications to demonstrate “alternatives for accomplishing the functions of storing electronic components in eyewear and providing nose support for eyewear.” Order, page 5. Further, in concluding that no claim construction was necessary due to functionality, the court analogized the features in the D461 patent to those found not strictly functional in L.A. Gear and Rosco, Inc. v. Mirror Lite Co., 304 f.3d 1373, 1378-79 (Fed. Cir. 2002), and distinguished the facts of Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010), where the Federal Circuit concluded that design features were “purely functional elements.” Order, page 6.
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).
Oakley, Inc. (“Oakley”) filed suit against Uvex Sports, Inc. (“Uvex”) on February 3, 2012, in the in the U.S. District Court for the Central District of California. Oakley alleges that certain Uvex products infringe U.S. patent no. 5,638,145 (“the ‘145 patent”), D557,325 (“the D325 patent”), or D556,818 (“the D818 patent”).
Specifically, the Complaint lists Uvex’s Rage product as infringing the D325 patent. One of the commercially available Uvex Rage glasses is shown below to the left, with Fig. 1 of the D325 patent to the right.
Additionally, the Complaint lists Uvex’s Titan product as infringing the D818 patent. One of the commercially available Uvex Titan glasses is shown below (top) with Fig. 1 of the D818 patent (bottom).
In March of 2011, Oakley was the target of a declaratory judgment from Predator Outdoor Products, LLC over design and utility patents assigned to Oakley that are not at issue in the Uvex suit. See our prior post.
Skechers U.S.A., Inc. filed a complaint against The Children’s Place Retail Stores, Inc., on February 2, 2012 (case number 2:2012-cv-00928 in the U.S. District Court for the Central District of California) alleging that Children’s Place manufactures, imports, sells, and offers to sell a line of footwear that “embodies and infringes the patented invention” disclosed in Skechers’s U.S. Design Patent D571,095.
The design patent at issue claims the ornamental design for a “crystal-covered show toe cap,” shown below.
Figure 1 (left) and Figure 3 (right) from U.S. D 571,095
The complaint alleges that “Children's Place footwear line includes, among others, shoes that have a vulcanized canvas sneaker, a toe cap adorned with crystal, rhinestones, sequins or a plurality of other similar shiny elements, and canvas uppers distinguished by colorful art designs or patterns.” Images of the allegedly infringing footwear, taken from page 8 of the complaint, are shown below.
Examples of allegedly infringing Children's Place footwear
This complaint against Children’s Place follows Croc’s successful enforcement of footwear design patents against Skechers, which we previously covered.