Entries in infringement (36)

Thursday
May292014

Oakley v. Sunscape

Once again going on the offensive by asserting design patents in its portfolio, Oakley, Inc. (Oakley) filed a complaint for patent infringement against Sunscape Eyewear, Inc. (Sunscape) on February 14, 2014, in the Southern District of California (14Cv0358-BTM-DHB).

The complaint relates to the following thirteen design patents:

  • D462,375 (‘375 patent), issued in 2002, claiming Eyeglass and Eyeglass Components,
  • D581,444 (‘444 patent), issued in 2008, claiming Eyeglass Components,
  • D581,443 (‘443 patent), issued in 2008, claiming Eyeglasses Components,
  • D569,412 (‘412 patent), issued in 2008, claiming an Eyeglass and Eyeglass Components,
  • D649,579 (‘579 patent), issued in 2011, claiming an Eyeglass,
  • D564,571 (‘571 patent), issued in 2008, claiming an Eyeglass and Eyeglass Components,
  • D547,794 (‘794 patent), issued in 2007, claiming Eyeglasses,
  • D554,689 (‘689 patent), issued in 2007, claiming an Eyeglass frame,
  • D556,818 (‘818 patent), issued in 2007, claiming Eyeglass Components,
  • D557,326 (‘326 patent), issued in 2007, claiming Eyeglass Components,
  • D616,919 (‘919 patent), issued in 2010, claiming an Eyeglass Front,
  • D610,604 (‘604 patent), issued in 2010, claiming an Eyeglass and Eyeglass Components, and
  • D620,970 (‘970 patent), issued in 2010, claiming an Eyeglass Component.

Oakley asserted that the Defendant allegedly manufactured, sold, offered for sale and/or imported into the United States eyewear allegedly infringing Oakley’s patent rights.

Oakley further asserted that it had provided the public with constructive notice of its patent rights by marking its products.

In the complaint, Oakley claimed that the Defendant was “knowingly, intentionally and willfully infring[ing] … [the above-noted design patents] by making, using, selling, offering for sale and/or importing eyewear” allegedly covered by these design patents.

Oakley asserted that the Defendant had knowledge of the patents, infringed with reckless disregard for Oakley’s patent rights, and knew or should have known that its actions constituted infringement.

Exhibits in the complaint included the above-noted patents, together with representations of the products allegedly infringing these patents. These representations, along with selected Figures from Oakley’s patents, are reproduced alongside in the chart below.

Oakley requested that its thirteen patents be deemed valid and willfully infringed, with a preliminary and permanent injunction against the Defendant, and payment of “all damages suffered by Oakley and/or Defendant’s total profit from such infringement” to Oakley. Further demands included a trebling of damages, an award of attorney fees, and pre-judgment and post-judgment interests and costs. A jury trial was requested.

This case is ongoing.

Tuesday
May132014

Oakley - US D523,461

Over the past few years Oakley Inc. (“Oakley”) has relied heavily on design patents to protect its product line.  Most recently, Oakley filed a complaint for patent infringement against Thermor Ltd. (Thermor), Fry’s Electronics, Inc. (Fry), Best Buy Co. Inc. (Best Buy), Tool King LLC. d/b/a/ Toolking.com (Toolking), Laptop Travel, LLC., and Beach Trading Co., Inc. d/b/a/ Buydig.com (Buydig), (collectively “Defendants”) on February 14, 2014, in the Southern District of California (14CV0349-GPC-DHB).

In the complaint, Oakley asserted that the Defendants manufactured, used, sold, offered for sale and/or imported into the United States, eyewear allegedly infringing Oakley’s Design Patent No. D523,461 (’461 patent), directed to an Eyeglass Component.  As discussed further below, Oakley has asserted the ‘461 patent on numerous occasions in the past.

Oakley previously sued Hire Order, Ltd. on June 2012, (3:12-cv-02346-DMS-WMC) over its ‘461 patent, demanding that Hire cease the sales of its Sportsman Eyewear video recording system.

In this case, Oakley claims Thermor was “knowingly, intentionally and willfully directly infring[ing], engag[ing] in acts of contributory infringement, and /or induc[ing] the infringement of the D461 patent by directly and/or directly making, using, selling, offering for sale and/or importing eyewear covered by the D461 patent.” Oakley listed Thermor’s BIOS Eyewear Cam as an allegedly infringing product.

Oakley made similar statements regarding Fry, and Fry’s BIOS Eyewear Cam, Best Buy and Best Buy’s Thermor – BIOS Eyewear Cam, Laptop Travel and their BIOS Eyewear Action Cam, as well as Toolking and Buydig for their Thermor 604FC BIOS Eyeware Action Camera.

Reproduced below is Figure 1 of the D461 patent, and a representation of the Thermor 604FC BIOS Eyeware Action Camera as listed on the Buydig.com website.

In the complaint, Oakley noted that the Defendant’s alleged acts of infringement were undertaken without license from Oakley, that Defendants had “actual and/or constructive knowledge of the D461 patent … [and] infringed the D461 Patent with reckless disregard of Oakley’s patent rights.” Oakley further argued that “Defendants knew, or it was so obvious that Defendants should have known” that their actions constituted infringement.

Oakley requested a preliminary and permanent injunction, damages allegedly suffered by Oakley and/or Defendants’ total profit from the alleged infringement, with treble damages. Oakley further requested an award of attorney fees, and pre-judgment and post-judgment costs. A jury by trial was demanded.

This case is ongoing.

The ’461 patent was also asserted by Oakley in the cases listed below, several of which are ongoing.

Case Number

Date Filed

Date Terminated

Outcome

Court

Note

8:11-cv-00456-JVS-PLA

03/22/11

06/28/12

Dismissed without Prejudice

Central District of California (Southern Division – Santa Ana)

 

3:11-cv-01305-DMS-WMC

06/14/11

04/02/12

Default Judgment

Southern District of California (San Diego)

 

3:13-cv-01292-DMS-WMC

06/04/13

09/04/13

Dismissed with Prejudice

Southern District of California (San Diego)

 

5:11-cv-01975-JKG

03/22/11

05/12/11

Voluntary Dismissal by Plaintiff

Eastern Distirct of Pennsylvania (Allentown)

Oakley as Defendant

1:11-cv-00034-LRR

03/21/11

08/02/11

Dismissed in deference to parallel action

Northern District of Iowa (Cedar Rapids)

Oakley as Defendant

2:09-cv-00624-JVS-AN

01/27/09

07/29/09

Default Judgment

Central District of California (Western Division – Los Angeles)

 

8:09-cv-00062-JVS-AN

01/14/09

08/25/09

Dismissed with Prejudice

Central District of California (Southern Division – Santa Ana)

 

3:12-cv-02346-DMS-RBB

09/26/12

N/A

Ongoing

Southern District of California (San Diego)

 

3:14-cv-00349-DMS-RBB

02/14/14

N/A

Ongoing

Southern District of California (San Diego)

 

3:14-cv-00270-LAB-BLM

02/14/14

N/A

Ongoing

Southern District of California (San Diego)

 

Monday
Oct212013

Skechers v. Perry Ellis

On October 11, 2013, Skechers U.S.A. Inc (Skechers) filed a Complaint against Shoe Confession LLC, Perry Ellis International, Inc. and PEI Licensing, Inc. (Perry) in the U.S. District Court for the Central District of California (Skechers U.S.A. Inc. et al. v. Shoe Confession LLC et al. 2:13-cv-07573).

The Complaint alleges willful and intentional infringement of Skechers’ D651,788, D652,613, D652,614, and D650,980 design patents, trade dress infringement, and unfair competition, as related to Skechers’ GO RUN® shoe and the Defendants’ Pro Player Phaze 2M shoe.

The ’788, ’613, ’614 and ’980 patents relate to an ornamental nub pattern on a sole bottom and outsole periphery, as shown in the Figures below from the Complaint.

Skechers ‘788 patent – Shoe Bottom

 

 

 

 

 

Skechers ‘613 patent –Shoe Bottom

 

 

 

 

Skechers ‘614 patent – Shoe Bottom

 

 

 

 

Skechers ‘980 patent – Shoe outsole and peripehry

 

 

 

 

 

 In the Complaint, Skechers identified the distinctive ornamental features of the trade dress as 1) a pattern of large nubs forming an X, as shown by red arrows in the figures below, 2) mid-size and smaller sized numbs surrounding the X-pattern, indicated by blue arrows below and 3) a repeating pattern of cleats and nubs on the periphery, indicated by yellow and green arrows below.

Reproduced below are the sole bottom and outsole periphery of the Skechers GO RUN® and of the Pro Player Phaze 2M, as shown in the Complaint.

SKECHERS GO RUN® Sole BottomSKECHERS GO RUN® Outsole Periphery

 

 

 

 

 

 

 

 

Pro Player Phaze 2M Shoe Outsole PeripheryPro Player Phaze 2M Shoe Sole Bottom

 

 

 

 

 

 

 

The Complaint listed four causes of action in view of the alleged design patent infringement. Skechers stated that the Pro Player Phaze 2M so closely resembled the invention claimed by each of the four patents that an ordinary observer would be deceived into purchasing the Pro Player in the mistaken belief that the Pro Player includes the inventions disclosed in these patents.

Skechers argued in the Complaint that it “has suffered, is suffering, and will continue to suffer irreparable injury with no adequate remedy at law,” and requested a permanent injunction against further infringing conduct by the Defendants.  Skechers further claimed that it was “damaged and losing profit’ by the Defendants” alleged willful infringement, and entitled to recover damages and total profit derived from the alleged infringement.

The Complaint further listed fifth and sixth causes of action in view of Federal unfair competition and trade dress infringement.  Skechers claimed that by allegedly using its sole bottom trade dress and outsole periphery trade dress, the Defendants deceived typical consumers in the mistaken belief that the Pro Player Phaze 2M emanated from a single source, with the acquired distinctiveness owned exclusively by Sketchers.

Skechers argued in the Complaint that the Defendants’ conduct allegedly constituted a “false designation of origin and false and misleading representation of fact likely to cause confusion, and to deceive by wrongly suggesting an affiliation connection or association with Skechers.” Skechers claimed that it was “damaged and losing profit” due to the alleged infringement and alleged unfair competition, and as such was entitled to recover damages and profits due to the Defendants’ alleged violations of the Lanham Act.

The Complaint listed a seventh cause of action in view of common law unfair competition. Skechers claimed that the Defendants are “willfully, fraudulently, oppressively, maliciously, and unlawfully attempting to pass off and passing off infringing footwear” as those approved by Skechers.

In the Complaint, Skechers requested a judgment directing destruction of all infringing goods and all instrumentalities used in the production, including tools, machines and equipment, within 10 days of the judgment. Skechers further requested that the judgment award damages, lost profits, reasonable royalties and other monetary amounts.  In particular, Skechers requested damages as a result of infringement, total profit from the sales of the allegedly infringing footwear, and damages as a result of the alleged unfair competition and of the lost business opportunities, with all damages being trebled.  Skechers further requested punitive damages, restitution, attorneys’ fees, pre-judgment interest at the maximum rate, and costs of the suit. A jury trial was requested.

Thursday
Sep192013

High Point Design LLC et al. v. Buyers Direct, Inc.

The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential unanimous opinion in High Point Design LLC et al. v. Buyers Direct, Inc. reversing in part, vacating in part, and remanding the district court’s decision in relation to design patent D598,183 (“the ‘183 patent”).

The case primarily addressed the validity of design patents in terms of obviousness and functionality, and also considered the sufficiency of pleadings of trade dress infringement.  In its discussion, the CAFC clarified the proper standards for determining the obviousness and functionality of design patents.   By way of disclosure, Buyers Direct, Inc. (“BDI”) was represented on appeal by Andrew M. Ollis, Frank J. West, and Philippe J.C. Signore of Oblon Spivak.

The ‘183 patent claims an “ornamental design for a slipper,” as shown in the drawing below:

The ‘183 patent has been commercialized in the snoozies!® footcovering, shown here:

After BDI sent a cease and desist letter to High Point Design LLC (“High Point”), High Point filed suit for declaratory judgment that the ‘183 patent was invalid and/or unenforceable and not infringed.  In its answer, BDI filed counterclaims of infringement of the ‘183 patent and trade dress infringement.

Four days after the deadline to amend pleadings had passed, High Point filed a combined motion seeking summary judgment of invalidity and non-infringement of the ‘183 patent and judgment on the pleadings in regard to the trade dress infringement counterclaims.  In BDI’s opposition, it included an expert declaration from a designer opining that the ‘183 patent was valid, and included proposed amended pleadings supplementing the trade dress infringement counterclaim.

The district court granted the motion for summary judgment, finding that the ‘183 patent was invalid as (1) obvious in light of the prior art and (2) primarily functional rather than primarily ornamental.  The district court also dismissed the trade dress infringement counterclaims with prejudice.

Obviousness

The CAFC reversed the grant of summary judgment of obviousness and remanded the case to the district court.  The CAFC explained the test for determining obviousness of design patents, clarifying that potential obviousness must be evaluated from the point of view of an ordinary designer, not an ordinary observer as the district court had done.  As such, the expert declaration submitted by BDI should have been considered.

Additional errors made by the district court were also noted by the CAFC for correction on remand.  First, the CAFC held that the district court failed to discern the correct visual impression of the patented design and, instead, simply described the general concept by using “too high a level of abstraction” and “failing to focus on the distinctive visual appearances of the reference and the claimed design.” Second, the CAFC held that the judge did not communicate her reasoning behind the selection of a primary reference, and the CAFC suggested that a side-by-side comparison is necessary.  Last, the CAFC stated that the district court did not consider BDI’s evidence of secondary considerations, but this evidence must always be considered when determining obviousness.

Functionality

The CAFC also reversed the grant of summary judgment of functionality and remanded the case to the district court for reconsideration.  The panel cautioned that the function of the article must not be confused with the functionality of the design, and held that the district court used the wrong standard in evaluating functionality.  The correct standard is to assess whether “the claimed design is 'primarily functional' or 'primarily ornamental,' i.e., whether the claimed design is ‘dictated by’ the utilitarian purpose of the article,” not to determine whether “the design’s primary features can perform functions.”

Trade Dress

Since the deadline for amending pleadings was over, the CAFC noted that the standard in evaluating a request to amend pleadings is “good cause” under Rule 16(b).  Since the district court did not explain whether this standard was used, and, if so, failed to explain why good cause did not exist, the dismissal was vacated and the case remanded.  The CAFC noted factors to be considered, including the moving party’s diligence, whether amendment will prejudice the defendants, and notice.

Wednesday
Sep182013

ITC: Toyo - Investigation Instituted

Further to our prior post on Toyo's ITC filing, according to a news release of September 16, 2013, the ITC voted to investigate Toyo's claims and will set a target date for completing the investigation within 45 days.