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.

Apple v. Samsung: Apple requests Preliminary Injunction against the 10.1N in Germany

Following our prior post regarding Samsung's new Galaxy Tab 10.1, Dow Jones Newswires now reports that Apple has requested a preliminary Injunction against Samsung's revised design. 

A hearing is reportedly scheduled for December 22, 2011.  FOSS Patents provides some Germany-specific insight on this development, and expects the hearing to not only relate to Apple's community design claims, but also Apple's unfair competition claims.

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.