Entries in injunction (10)

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)

 

Wednesday
Dec192012

Apple v. Samsung: Injunction Denied and No Juror Misconduct

As we previously reported, Apple moved for an injunction to enjoin Samsung from infringing, contributing to the infringement, or inducing infringement of Apple’s U.S. Design Patent Nos. 604,305 and 618,677.  The federal judge in the case, Judge Lucy Koh, however, denied Apple’s request for permanent injunction, allowing Samsung to continue selling products found to infringe Apple’s patents.

In a recent order, Judge Koh denied the request for permanent injunction, finding, inter alia, that Apple did not prove the causal nexus between infringement of its patents and irreparable harm alleged to have been suffered.  That is, Apple did not show its lost sales were because Samsung infringed Apple’s patents.

According to FOSS Patents, Apple will undoubtedly appeal the decision denying permanent injunction to the Federal Circuit.

On the same day as denying Apple’s permanent injunction request, Judge Koh also issued an order denying Samsung’s motion for a new trial based on a juror misconduct claim.  In their claim, Samsung moved for a new trial on the basis that the jury foreperson gave dishonest answers during voir dire and was actually biased against Samsung.  The judge denied the claim because evidence concerning the standards applied during jury deliberation is barred by Federal Rule of Evidence 606(b).

Tuesday
Aug282012

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.

Thursday
Feb162012

Oakley concludes one successful enforcement suit and continues another

On February 9, 2012, Oakley, Inc., concluded a successful suit to enforce eyeglass utility and design patents in the U.S. District Court for the Southern District of California (Oakley v. Talitor Far East Co. Ltd et al., case no. 3:2011-cv-01305).  The complaint, filed in June of 2011, alleged infringement of Oakley’s design patent, U.S. Patent No. D523,461 (“ the D461 patent”), and utility patent, U.S Patent No. 5,387,949 (“the ‘949 patent”), by eleven named defendants.

The D461 patent claims the ornamental design for an eyeglass component, as shown below.

At the close of litigation, eight defendants settled by agreeing to permanent injunctions against continued infringement.  Further, the court entered final judgment against one defendant, Nutech Trading USA, Inc., ordering a permanent injunction against continued infringement, payment of total profits from sales of infringing eyewear, and payment of the plaintiff’s costs and reasonable attorneys’ fees.  Order, 3:2011-cv-01305, January 31, 2012.

Oakley continues to pursue enforcement of the D461 patent and the ‘949 patent in another suit, Oakley v. Predator Outdoor Products et al. (case no. 8:2011-cv-00456), currently pending before the U.S. District Court for the Central District of California.  Parties to this ongoing suit filed claim construction briefs on February 6, 2012, following a series of settlement conferences.

Previously, litigation in the Central District of California case was voluntarily stayed to conclude the declaratory judgment action, Hunter’s Specialties et al. v. Oakley (case no. 1:2011-cv-00034), filed in the U.S. District Court for the Northern District of Iowa.  Another declaratory judgment action, Predator Outdoor Products v. Oakley (case no. 5:2011-cv-01975), filed in the U.S. District Court for the Eastern District of Pennsylvania, which we previously reported, was voluntarily dismissed to pursue the combined declaratory judgment action with Hunter’s Specialties in Iowa.  Chief Judge Linda Reade, of the Northern District of Iowa, dismissed the joint declaratory judgment action “in deference to the parallel action in the United States District Court for the Central District of California,” reasoning that the declaratory judgment action was merely “forum shopping in the form of [an] anticipatory, declaratory judgment suit[].”  Order, p. 14-15, case no. 1:2011-cv-00034, August 2, 2011.