Lindby Custom successfully enforces a design for motorcycle parts, but would the proposed PARTS legislation have affected the court’s ruling?

On February 15, 2012, the U.S. District Court for the Central District of California entered Default Judgment in the matter of Lindby Custom, Inc. v. AMI Group (case no. 8:10-cv-01779).  In its Complaint, Lindby Custom alleged infringement of U.S. Design Patent D548,142 (“the D142 patent”), in addition to trade dress and unfair competition claims.

The D142 patent claims “the ornamental design for the combined engine guard and highway peg” for motorcycles, shown below.

In its Default Judgment order, the court ordered AMI to pay Lindby Custom compensatory damages of $285,000, and attorneys’ fees and costs of $9,800, in addition to ordering a permanent injunction against continued infringement.

The court’s ruling follows less than two weeks after introduction of a bill in Congress, H.R. 3889, intended to create exceptions to acts of design patent infringement under 35 USC § 271 for certain component parts of motor vehicles, as we previously reported.  In turn, we thought it would be interesting to consider whether the proposed legislation could have affected the Lindby Custom v. AMI Group ruling, had the legislation been in effect.

As a threshold question we considered whether the Lindby case involves:

"a design patent that claims a component part of a motor vehicle as originally manufactured." 

H.R. 3889 (emphasis added).  The answer to this question may depend on an issue of statutory construction. 

First, if the clause "as originally manufactured" modifies only the term "a motor vehicle," then the proposed legislation might only apply to design patents that claim parts installed on a motor vehicle as it leaves the manufacturer's assembly line.  Accordingly, under this first interpretation, the proposed legislation might not apply to the D142 patent because there is no evidence that Lindby Custom provided engine guards for "motor vehicle[s] as originally manufactured."

However, in the alternative, if the clause "as originally manufactured" modifies the term "a component part," then the proposed legislation might apply to all motor vehicle component parts, as the component parts themselves are originally manufactured.  Under this second interpretation, the proposed legislation would likely apply more broadly to include design patents for aftermarket parts, such as the D142 patent, even if those parts were never installed on a motor vehicle as part of that motor vehicle's original manufacture.  Thus, under this second interpretation, the proposed legislation may have acted to diminish the damages award in the Lindby case by providing an exception to infringement for acts intended "for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured."  H.R. 3889.

Nestlé continues Trend of Recent Consumer Products Design Patent Complaints

Continuing a pattern of design patent infringement suits involving consumer products filed in recent months, Nestlé Healthcare Nutrition, Inc. “(Nestlé ) and Gerber Products Company (“Gerber”) sued Mead Johnson & Company, LLC (“Mead Johnson”) in the United States District Court for the District of Delaware on January 26, 2012.

The suit, 1:12-cv-0079, alleges that the sale of certain Mead Johnson bottles infringes Nestlé’s U.S. Design Patent No. D 447,421 (“the ‘421 patent”).  The complaint further alleges unfair competition, trade dress infringement, and various state law causes of action against Mead Johnson.  The ‘421 patent is directed towards an ornamental design for a bottle.  See Fig. 1 to the left. 

The Nestlé complaint states that the patented bottle has been used in its Boost® line of nutritional drinks.  ¶ 14.  Mead Johnson has supplied Nestlé with the products covered by the ‘421 patent.  ¶ 14.  However, Nestlé alleges that Mead Johnson also supplied infringing bottles as private label products to Wal-Mart, Kroger, and Sam’s Club without a license.  ¶ 19.  In an unusual twist, the allegedly infringing products are reportedly marked with the ‘421 patent number.  ¶ 19.

Notably, Mead Johnson had previously sued Nestlé and Gerber in United States District Court for the Southern District of Indiana in August 2011, 3:11-cv-0100, for infringement of U.S. patent no. 7,040,500 entitled “Container and Scoop Arrangement.”  Thus, this month’s Nestlé suit asserting the ‘411 design patent appears to be part of a larger dispute between the companies.

In November 2011, Crocs Inc. (“Crocs”) brought suit against Walgreen Co. in the United States District Court for the District of Colorado, 1:11-cv-02954, alleging infringement of U.S. Patent No. D 610,784 (“the ‘784 patent”) and U.S. patent no. 6,993,858.  The ‘784 patent is directed towards an ornamental design for footwear.  See Fig. 1 to the right. 

The Crocs complaint states that prior to filing suit Crocs sent Walgreens a letter asking that Walgreens cease and desist selling its “Caribbean Cartel” footwear.  ¶ 20.  Crocs had previously asserted other design patents on its footwear as reported, for example, in Crocs Inc. v. Int’l Trade Comm’n., 598 F.3d 1294 (Fed. Cir. 2010). See our prior post.  The most recent Crocs suit is an example of the common strategy of asserting design patents in combination with utility patents against an alleged infringer.

Finally, in October 2011, Kohler Co. (“Kohler”) sued Amerisink, Inc. in the United States District Court for the Eastern District of Wisconsin, 11-cv-921, asserting infringement of two design patents, nos. D 510,985 (“the ‘985 patent”) and D 529,147 directed towards ornamental designs for sinks.  See Fig. 1 of the ‘985 patent to the left.  

Kohler asserted that Amerisink infringed these patents through its sale of certain stainless steel sinks.  ¶ 21.  As in the Crocs suit, Kohler reported that it sent Amerisink a cease and desist letter regarding the alleged infringement prior to filing suit.  ¶ 22.

Design patents continue to be an important, though sometimes overlooked, tool in the patent portfolios of many companies, especially those in the consumer products arena.  As with other recent patent design suits, the suits discussed above were brought by American companies.  Whether foreign companies will also choose to assert their own design patents with greater frequency in the future remains to be seen.

Déjà vu - Crocs sues Skechers for Design Infringement

In December of 2008, Crocs Inc. and Skechers Inc. agreed to settle patent litigation (case number 1:08-cv-01450, in the U.S. District Court for the District of Colorado) concerning U.S. D517,789, U.S. D564,208 and U.S. D564,207.  That patent litigation concerned a line of slip-on foam clogs made by Skechers, which Crocs alleged infringed the patents.

On May 20, 2011, Crocs filed a complaint and initiated a new suit against Skechers, case number 1:11-cv-01330, in the U.S. District Court for the District of Colorado.  Crocs alleges the Swifts line introduced in the summer of 2010 by Skechers is an “obvious imitation” of Crocs’ original shoe design for the CROCBAND^TM model footwear, which is protected by U.S. D610,784.  Crocs also alleges Skechers breached a settlement agreement of September 23, 2010, stemming from Crocs’ contact with Skechers’ around the time the Swifts line was introduced.

Kraft Foods Sues Van Law Food Products Over Bottle

Kraft Foods filed suit against Van Law Food Products in the U.S. District Court for the Southern District of New York on May 17, 2011.  In the Complaint, Kraft Foods alleges that the bottles sold by Van Law Food Products, including those sold under the Eating Right brand (pictured below) infringe six design patents held by Kraft Foods.

Eating Right Bottles (copied from Complaint)          Kraft Bottles (Figs. 2-4 of D568,164)

The design patents in suit are U.S. Patent Numbers D568,164, D569,733, D585,746, D585,747, D611,347, and D611,820.  Regarding the patented bottles, the Complaint states that “these designs are distinctive and appealing to the eye” and that “these designs are also particularly desirable and valuable when applied to plastic bottles used for containing and promoting liquid food product such as salad dressing.”

The complaint also alleges that the bottles of Van Law Food Products violate Kraft Foods’ trade dress and constitute unfair competition.

Johanna Foods, Inc. v. Coca-Cola - D.N.J.

In response to efforts by Coca-Cola to enforce its design patents, Johanna Foods, Inc. filed a declaratory judgment complaint on September 21 in the U.S. District Court for the District of New Jersey against Coca-Cola, d/b/a Simply Orange Juice Company. According to the complaint, in December 2009, Coca-Cola sent Johanna a letter asserting their rights under trade dress law and under seven design patents relating to beverage containers. In that letter, Coca-Cola allegedly stated that it had filed suit against third parties to whom Johanna had previously supplied and/or licensed a carafe-shaped container design and that the third parties had “each agreed to cease use of the accused design in settlement of the action.” The complaint also stated the Coca-Cola sent an August 2010 letter to Johanna customer ALDI asserting federal and state trademark rights as well as design patent rights against the beverage packaging that Johanna sold to ALDI, again citing “previous successful efforts” against other third parties. In September 2010, Coca-Cola then allegedly sent another letter to Johanna, reviewing the previously stated enforcement efforts and threatening suit over Johanna’s supply of beverage containers to ALDI as well as Johanna’s use of its own beverage containers in its own Tree Ripe brand.

Johanna’s complaint asserts that Coca-Cola’s “previous successful efforts” resulted in confidential, out-of-court settlements and not adjudication on the merits of the cases. Johanna also states that Coca-Cola’s litigation threats may significantly harm Johanna’s business relationship with ALDI and its profits from its Tree Ripe brand. The complaint further notes that Johanna itself has design patents on both its Nature’s Nectar Bottle (for which ALDI is a customer) and its Tree Ripe Bottle.

Johanna brings eight causes of declaratory judgment of no infringement: one for no trade dress infringement, and seven for no infringement of design patents, one for each of Coca-Cola’s seven above-mentioned design patents. Johanna first argues that Coca-Cola has no valid trade dress rights in its Simply Orange bottles and that Johanna’s accused bottles do not infringe any valid trade dress rights of Coca-Cola’s because there is no likelihood of confusion. Regarding each of Coca-Cola’s seven design patents, Johanna’s complaint alleges that an ordinary observer would not believe that its bottles are the same as the patented designs, but that such an observer would notice substantial differences between the two. Johanna seeks declaratory judgment, court costs, and reasonable attorney’s fees on each of the eight claims.

Photographs of the accused products together with selected figures from the Johanna and Coca-Cola design patents are shown here.