Entries in patent infringement (22)

Friday
Mar142014

Mulch v. Novel - Request for Declaratory Judgment

International Mulch Company, Inc. (Mulch) filed a complaint requesting declaratory judgment against Novel Ideas, Inc. (Novel) in the Eastern District of Missouri Eastern Division on March 11, 2014 (4-14-cv-00446).

In the complaint, Mulch requested a Declaratory Judgment of patent non-infringement and invalidity of two design patents owned by Novel, US D640,268 (’268) and US D654,191 (’191), both directed to flexible landscape edging.

Mulch stated that it began selling a lawn edging product to Lowe’s, and that Novel allegedly took the position that Mulch’s lawn edging product infringed the ’268 and ’191 patents.  Mulch further stated it had informed Novel that its product did not infringe Novel’s patents, and argued the ornamental design of their product differed from Novel’s patented design due to the product having an “appearance of variable sized cobblestones,” “a squared-off top,” “three holes for stakes,” and a “rounded inside corner.”

Figure 1 of the ‘268 patent is reproduced below:

In the complaint, Mulch stated Novel had allegedly “on information and belief, communicated directly to Lowe’s, taking the position that the [Mulch] lawn edging product being sold by Lowe’s infringe[d] the 268 Patent and the 191 Patent.” Mulch declared “apprehension that Novel will commence litigation” against Mulch and/or Lowe’s.

Mulch argued non-infringement of both the ’268 and ’191 patents, and stated that the alleged allegations of patent infringement “have placed a cloud over [Mulch’s] business, … are likely to cause [Mulch] to lose revenues and business opportunities, … and will likely cause irreparable injury to [Mulch].” Mulch further argued invalidity of both the ’268 and ’191 patents “due to functionality.”

In its prayer for relief, Mulch requested that Novel be prevented from “interfer[ing] in any way with [Mulch’s] manufacture, use, offer for sale, or sale of [Mulch’s] lawn edging product. A trial by jury was requested.

This case is ongoing.

Tuesday
Feb252014

Skyline Design Patent Complaints

Skyline USA, Inc. (Skyline) recently filed two complaints asserting infringement of a design patent directed to a combined flashlight and stun gun.

In the first complaint filed February 7, 2014, Skyline alleged infringement by Cutting Edge Products, Inc. (Cutting Edge), in the Middle District of Florida, Orlando division (6:14-cv-212-ORL-36GJK).

The complaint relates to Design Patent No. D671,249 (‘249 patent), which issued November 20, 2012, and claimed a combined flashlight and stun gun. Figure 1 of the ‘249 patent, as shown in the complaint, is reproduced below.

In the complaint, Skyline alleges Cutting Edge offered to sell, and sold, combined flashlights and stun guns within the scope of the ‘249 patent.  Skyline further alleged the accused product shared the "distinctive overall appearance, which includes without limitation a scalloped bezel and distinctive handle" shown in the ‘249 patent.

Skyline asserts willful infringement by Cutting Edge of the ‘249 patent.  A representation of the alleged infringing Cutting Edge Product, as shown in the complaint, is reproduced below.

Skyline requested treble damages, an award of attorney fees, as well as prejudgment and post judgment costs.  Skyline also demands Cutting Edge be permanently enjoined from infringing the ‘249 patent.

Skyline filed a similar second complaint February 7, 2014, alleging infringement by M.A.S. Ga LLC d/b/a/ S&D Wholesale (S&D Wholesale), in the Middle District of Florida, Orlando division (6:14-CV-210-ORE-28K), regarding the ‘249 patent.

The complaint includes a side by side comparison of the ‘249 patent and of the S&D Wholesale product, and alleges the two share a "distinctive overall appearance, which includes without limitation a scalloped bezel and distinctive handle." A rear elevational view and a bottom plan view of the ‘249 patent and accused S&D Wholesale product, as shown in the complaint, are reproduced below.

Skyline asserts willful infringement by S&D Wholesale of the ‘249 patent, and made requests identical to those in its complaint against Cutting Edge.

Both of these cases are ongoing.

Tuesday
Feb112014

Gillette Design Patent Enforcement

Over the past 6 months the Gillette Company (Gillette) has filed two different complaints asserting infringement of numerous design patents to protect several of its razor blade related products.  In the first case, Gillette recently obtained a consent judgment, illustrating the value of design patents in its patent portfolio.  The second case is ongoing.

First, on October 10, 2013, Gillette filed a complaint against BK Gifts, BK Razors, Brian Patrick, Kim Murry, and Zilo Store, Inc. (collectively, “Defendants”), in the Southern District of Ohio (Gillette Company v. BK Gifts, transferred to the Northern District of Ohio, Docket No. 3-13-cv-02241-1).

The suit related to the following six design patents, which Gillette asserted covered the “valuable, unique and distinctive ornamental distinctive and non-functional design” of their razors:

  • D415,315 (’315 patent), issued on October 12, 1999, claiming “the ornamental design for a razor cartridge,”
  • D422,751 (’751 patent), issued on April 11, 2000, claiming “the ornamental design for a razor blade cartridge,”
  • D430,023 (’023 patent), issued August 29, 2000, claiming “the ornamental design for a container,”
  • D440,874 (‘874 patent), issued April 24, 2001, claiming “the ornamental design for a container,”
  • D531,518 (’518 patent), issued on November 7, 2006, claiming “the ornamental design for a dispenser for razor cartridges,” and
  • D575,454 (’454 patent), issued on August 19, 2008, claiming “the ornamental design for a shaving blade unit.”

The ’315 patent is set to expire on October 12, 2013 and the ’751 and ’023 patent will expire in 2014.

Figure 1 of the ’751 patent, Figure 1 of the ’518 patent, and Figure 1 of the ’454 patent are shown below, respectively.

The Defendants allegedly copied these designs corresponding to Gillette’s Mach®, Fusion®, and/or Venus® razor blade cartridges, shaving blade units, dispensers, and shaving blade containers products.

Gillette stated that on August 12, 2013, it sent an e –mail to various e-mail addresses associated with BK Gifts, notifying BK entities of the infringement of Gillette’s’ intellectual property and design patent rights.  An alleged August 15, 2013, letter by Gillette further requested resolution of BK Gifts’ and BK Razors’ infringement of Gillette’s design patent and intellectual property rights, with copies of the ‘751 and ‘454 patents.  Gillette allegedly received no response to this letter.

Gillette stated that on July 21, 2013, it sent a letter to Zilo demanding that Zilo cease and desist from further infringement, including attachment of the ‘751 patent, ‘454 and 315 patents.  On August 7, 2013, Gillette allegedly received a response offering full cooperation, but the infringing products remained available for sale online.

In the complaint, Gillette claimed that an ordinary observer would be deceived by the substantial similarity between its patented designs and the products sold and/or offered for sale.  Accordingly, Gillette claimed that Defendants’ deliberate and willful actions in infringing the above-noted design patents caused and would continue to cause irreparable harm unless preliminarily and permanently enjoined.

A consent judgment dated January 22, 2014, noted that Gillette and the Defendants entered into Confidential Settlement Agreements, dated and effective as of January 15, 2014, resolving all disputes and claims between the parties, including past damages, costs and attorneys’ fees.

The ’751, ’454 and ’518 patents, referred to as “the Fusion and Mach Patents” were determined to be infringed, not invalid, and not unenforceable.  Injunctions were granted against the Defendants.

In the consent judgment, the Defendants admitted that “the Fusion and Mach Patents are valid and enforceable in all respects, and that the razor cartridges and cartridge containers sold by the BK Defendants as ‘comparable to’ Fusion or Mach razor cartridges, or otherwise advertised or sold by the BK Defendants as substitutes, alternatives, or replacements for Fusion of Mach razor cartridges and cartridge containers violated the applicable Fusion and Mach patents.”

The judgment further noted that the Defendants would “terminate all manufacture, offers for sale, sale, and use of its current razor cartridges and cartridge containers incorporating the designs protected by any and all of the Fusion and Mach patents, and are hereby permanently enjoined, in the absence of a license, from making, offering for sale, selling and using such products, and variations thereof, during the enforceable life of the Fusion and Mach Patents.”

Second, Gillette also filed a complaint on January 29, 2014, in the Southern District of Ohio (Docket No. 1:14-cv-89), against the Javitch Canfield Group (JCG) and PNL Ventures (PNL). Gillette alleged infringement of Gillette’s design patent rights, as protected by the D422,751 patent, seeking a preliminary and permanent injunction against continued infringement.  In the complaint, Gillette claimed that both JCG and PNL offered for sale on Amazon.com, and based a substantial component of their business on direct copies and near exact imitations of Gillette’s product as embodied in the design of the ’751 patent.

Gillette filed for injunctive relief and damages, individually and collectively for joint and several liability, and for willful infringement from both JCG and PNL.  Gillette further requested an assessment of Gillette’s damages and/or Defendant’s profits, an award of attorneys’ fees to Gillette. A trial by jury was demanded.  This case is ongoing.

Friday
Jan102014

Pacific Coast v. Malibu Boats

In 2011, Pacific Coast Marine Windshields Limited (Pacific Coast) brought suit (No. 12-CV-0033) against Malibu Boats, LLC (Malibu) in the Middle District of Florida, alleging infringement of U.S. Patent No. D555,070. The District Court held that Pacific Coast was barred from alleging infringement due to prosecution history estoppel, and Pacific Coast appealed. 

On January 8, 2014, the Federal Circuit held that “the principles of prosecution history estoppel apply to design patents” but reversed the district court’s summary judgment of non-infringement because “the accused infringing design was not within the scope of the subject matter surrendered during prosecution.”

A design patent application filed in 2006 by Darren Bach, CEO of Pacific Coast, depicted various embodiments of the claimed ornamental design for a marine windshield with configurations including zero, two, and four vent holes on a corner post.  In response to a restriction requirement, the applicant elected a group corresponding to a single figure with four vent holes, and canceled the remaining figures.  Mr. Bach later obtained a patent for a divisional of the originally filed application, claiming a windshield with no vent holes.  The application issued as D555,070.

Figure 1 of the ‘070 patent is reproduced below.

The accused infringing design of Malibu Boats is a boat windshield with three trapezoidal holes, as shown below.

The District Court granted Malibu Boats’ motion for summary judgment of non-infringement, finding that prosecution history estoppel barred the infringement claim.  The District Court’s decision recognized that the accused design had one fewer vent hole but explained that ‘“the accused design is still clearly within the territory [surrendered] between the original claim and amended claim.’”

On appeal, the Federal Circuit noted that the doctrine of prosecution history estoppel is well established for utility patents, but that the concept of prosecution history estoppel as applied to design patents was “one of first impression” for the court.  For utility patents, the doctrine of prosecution history estoppel prevents a patentee from recapturing in an infringement action subject matter which was surrendered during prosecution.

The Federal Circuit noted that “for design patents, the concepts of literal infringement and equivalents infringement are intertwined,” and stated that accordingly “the test for design patent infringement is not identity, but rather sufficient similarity.” Furthermore, the Federal Circuit acknowledged that Pacific Coast had “characterized the substantial similarity between the accused designs and the ‘070 patent as the basis for an infringement claim ‘under the doctrine of equivalents.’” The Federal Circuit concluded that “the principles of prosecution history estoppel apply to design patents as well as utility patents.”

The Federal Circuit then addressed the question of whether the prosecution history estoppel barred infringement in this case.

The Court determined that there was a surrender of claim scope during prosecution, and that “by removing broad claim language referring to alternate configurations and cancelling the individual figures showing the unelected embodiments, the applicant narrowed the scope of his original application, and surrendered subject matter.”

In addition, the Federal Circuit noted that the claim scope was surrendered to secure the patent, but not to avoid prior art.  Whereas Pacific Coast argued that only surrenders to avoid prior art were within the doctrine, the Federal Circuit cited Festo stating that “the rationale behind prosecution history estoppel ‘does not cease simply because the narrowing amendment, submitted to secure a patent, was for some purpose other than avoiding prior art.’”

With respect to the scope of the surrender, the District Court had determined  that the accused design was within the scope of the surrender, i.e., that by abandoning a design with two holes and obtaining patents on designs with four holes and no holes, the range between four and zero was abandoned.  In contrast, the Federal Circuit stated that “this range concept does not work in the context of design patents where ranges are not claimed, but rather individual designs.” The Federal Circuit further noted that “the applicant surrendered the claimed design with two holes on the windshield corner post, but neither submitted nor surrendered any three-hole design.”

Thus, the Federal Circuit held that the prosecution history estoppel principles apply to design patents, but do not bar Pacific Coast’s infringement claim, and remanded for further proceedings.

Friday
Feb152013

Beats sues Yamaha for trade dress and design patent infringement

Beats Electronics, LLC (Beats) filed a complaint against Yamaha Corporation of America (Yamaha) on February 6, 2013, in the Central District of California, alleging infringement of Beats’ design patents and trade dress.  The complaint includes a request that the court enter a judgment that requires Yamaha to deliver to Beats, for destruction, all of the alleged infringing headphones and any materials which depict the alleged infringing headphones.  The complaint demands a jury trial on all issues.

According to the complaint, counsel for Beats notified Yamaha on November 30, 2012, of its belief that the Yamaha Pro 300, Yamaha Pro 400 and Yamaha Pro 500 headphones infringe Beats patents and Beats’ trade dress rights, and the complaint alleges that the Pro 300, Pro 400 and Pro 500 headphones are “knock-offs of Beats’ world-famous ‘Studio,’ ‘Solo,’ and 'Wireless’ model headphones.”

The complaint alleges that Yamaha has “infringed Beats’ famous and distinctive trade dress and committed unfair competition,” and that Yamaha has infringed Beats’ design patents D632,668 and D552,077, which respectively claim an audio listening system and a headphone.

Fig. 8 of D552,077, Fig. 1 of D632,668 and an image of one of the alleged infringing Yamaha headphones from Exhibit E of the complaint are reproduced below, respectively, left to right.

Exhibit F of the complaint, which is titled “BEATS SOLO vs. YAMAHA 300,” is reproduced below.

In the complaint, Beats alleges that “[c]onsumers appreciated the design, as well as the sound quality, of the Beats Headphones and began wearing the Beats Headphones around their necks as a fashion accessory even when not listening to music.” Beats further alleges that “Beats’ Trade Dress rights in these products consists [sic] of the overall appearance of the shape and design of the headphones, including the size, proportion and curvature of the headband, yoke and earcups,” citing to Exhibits A-C of the complaint.

The complaint further alleges that the following images are advertisements that have been displayed by Yamaha or its affiliate on the Internet, and argues that these images “further show Defendant’s intention to copy the distinctive design of Beats’ headphones and/or its intention to trade off of the goodwill associated with Beats’ product appearance.”