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.

Apple v. Samsung: Update October 17, 2011

As reported by Reuters, U.S. District Judge Lucy Koh has commented on the case in a court hearing on Thursday, October 13, 2011, but has not yet ruled on a pending motion for a preliminary injunction to bar some of the Samsung Galaxy products from being sold in the U.S.

Reportedly, Judge Koh frequently remarked on similarities between the Samsung Galaxy Tab 10.1 and the Apple iPad, and even questioned Samsung's attorneys as whether they could identify Samsung's tablet between the two.

Nonetheless, Judge Koh indicated the utility patent asserted by Apple would not be sufficient to support an injunction, and has not yet determined whether any of the design patents asserted by Apple would be sufficient to support an injunction.  However, Judge Koh indicated a formal order would follow promptly.

Apple v. Samsung: Preliminary Injunction in Germany; Updated

The Regional Court of Dusseldorf (Germany) granted Apple a preliminary injunction on August 9, 2011, as reported in FOSS Patents and The Telegraph.  The injunction is effective for all of Europe except for the Netherlands. 

In response, Kim Titus, a spokesman for Samsung, was reported in the Washington Post as stating the preliminary injunction was issued “without any hearing or presentation of evidence from Samsung.”

[Update] The response from Kim Titus may be misleading.  According to FOSS Patents, court documents reveal Samsung apparently unsuccessfully pleaded against the preliminary injunction.

As reported by The Wall Street Journal on August 16, 2011, the Regional Court of Dusseldorf has partly lifted the preliminary injunction, with a court spokesman stating it was disputable whether it is possible for a German court to ban a company headquartered in South Korea from selling goods outside of Germany.  A hearing has also been scheduled for August 25 to hear an appeal from Samsung concerning the preliminary injunction.

One issue expected to be discussed or addressed at the August 25 hearing is the proportions of the pictures of the Galaxy Tab in Apple's complaint appear to have been altered.  This issue was noted by Webwereld.nl. 

At issue, page 28 of Apple's complaint includes the following picture:

Reproduced below is the Galaxy Tab image from page 28 of the complaint shown together with an image of the U.S. version of the Galaxy Tab.  These images have been adjusted to display a common device width. 

It appears the image of the Galaxy Tab from page 28 of the complaint has been "shrunk" to have the same height of Apple's iPad2, but the effect altered the aspect ratio of the Galaxy Tab.  It is unclear whether this apparent inaccuracy in the complaint affected the Court's judgment.

[Update] As reported by PC Pro, the Judge for the Regional Court of Dusseldorf had a visual inspection of the devices at issue.  As a result, it does not appear the apparently misleading images from the complaint misled the Judge.

Update on Apple v. Samsung Downunder

As reported by Bloomberg, Apple has obtained an at least temporary injunction against Samsung sales of the Galaxy Tab 10.1 in Australia.  Samsung has agreed to stop advertising the Galaxy Tab 10.1 and to not sell the device until it obtains court approval or the lawsuit is resolved.  Apple has agreed to pay Samsung unspecified damages should Samsung win the related patent lawsuit in Australia. 

Samsung has agreed to provide Apple with samples of the Australian Galaxy Tab 10.1, which Samsung states is different than the U.S. version, for Apple's review prior to distribution.  A hearing is scheduled for August 29, 2011, in Sydney, Australia.

Bloomberg reports Apple will attempt to prevent Samsung from selling the Galaxy Tab 10.1 in other countries as well.

[Samsung Galaxy Tab 10.1, from www.samsung.com]

Update on Apple v. Samsung

Further to our coverage of the ongoing Apple v. Samsung litigation, Apple filed a motion for preliminary injunction on July 1, 2011.  Apple also filed motions for an expedited trial and for shortening the time for the briefing process in the expedited trial.

On July 12, 2011, Judge Lucy Koh denied the motion to shorten time.  However, the motion for preliminary injunction and motion for an expedited trial are still pending.

From the order of July 12, 2011:

"The Court agrees that Apple has not established substantial harm or prejudice justifying a shortened briefing and hearing schedule for its Motion to Expedite."

Further, "Apple indicated at the May 12, 2011 hearing that it had been aware of its infringement claims for at least a year and engaged in negotiations with Samsung during that time.... The Court agrees with Samsung that the length of time Apple has been aware of its claims and the long history of infringement alleged in the complaint undermine Apple's claims of urgency to some extent."