Injunction

Update on Apple v. Samsung

May 25, 2011

We have been following the dispute between Apple and Samsung on our blog (see here). On April 15, 2011, Apple filed suit against Samsung for trademark, trade dress, design patent and utility patent infringement, alleging that Samsung purposely designed several of its recent Galaxy line of products after Apple’s hit iPad and iPhone devices. Taking a relatively aggressive posture, Apple requested accelerated discovery in anticipation of Samsung's upcoming product launches in the U.S.

On May 18, 2011, U.S. District Court Jude Lucy H. Koh ordered (see Order Granting Limited Expedited Discovery) Samsung to produce product samples, packaging and package inserts for Samsung models Galaxy S2, Galaxy Tab 8.9, Galaxy Tab 10.1, Infuse 4G and the Droid Charge (4G LTE). The Droid Charge was recently released, but the other models have only been announced and are not yet available for sale in the U.S.

Update on Apple v. Samsung Downunder

August 1, 2011

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.

Apple v. Samsung: Preliminary Injunction in Germany; Updated

August 16, 2011

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.”

Apple v. Samsung: Preliminary Injunction in Germany; Updated September 9, 2011

September 9, 2011

Following up on our coverage of the Apple/Samsung dispute in Germany, FOSS Patents has reported that the Regional Court of Dusseldorf (Germany) has once again upheld the preliminary injunction against Samsung's Galaxy Tab devices based on a Community Design. Although the decision can be appealed, the preliminary injunction may hold until full proceedings are conducted, which FOSS Patents indicates could take up to a year to conclude.

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

December 23, 2011

Following our prior post regarding Apple's request for preliminary injunction, Reuters reported on December 22, 2011, that Judge Johanna Brueckner-Hofmann stated that, "[a]ccording to the court's assessment, the defendant has moved away sufficiently from the legally protected design." A final verdict is expected in February.

Oakley concludes one successful enforcement suit and continues another

February 16, 2012

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.

Apple v. Samsung: Apple requests injunctions

August 28, 2012

Following the jury verdict, Apple has requested an injunction of seven Samsung phones based on design patent infringement of D677 and D305.

Apple v. Samsung: Injunction Denied and No Juror Misconduct

December 19, 2012

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.

Oakley - US D523,461

May 13, 2014

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)

Oakley v. Sunscape

May 29, 2014

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.

Oakley Files Design Patent Infringement Suits on Successive Days

January 27, 2015

On January 22, 2015, Oakley, Inc. (“Oakley”) filed a complaint against ICU Eyewear, Inc. (“ICU Eyewear”) in the Southern District of California (3-15-cv-00150-LAB-NLS), alleging design patent infringement of U.S. D469,458directed to an Eyeglass Front; U.S. D556,818directed to Eyeglass Components; and U.S. D692,047directed to an Eyeglass. The very next day, Oakley again asserted U.S. D692,047 in the Southern District of California (3-15-cv-00162-MMA-MMD), this time against Dang Shades, LLC (“Dang Shades”).

Ford Global Technologies LLC Files Complaint for Design Patent Infringement Against United Commerce Centers, Inc.

January 31, 2015

On January 29, 2015, Ford Global Technologies LLC (“FGTL”) filed a complaint in the Eastern District of Michigan (2-15-cv-10394) against United Commerce Centers, Inc. (“UCC”), which FGTL believes is doing business as New World International, alleging design patent infringement of the following U.S. Design Patents, which are attributed to the 2004 Ford F-150 and the 2005 Ford Mustang. The pictures below are provided in the complaint.

Oakley v. 7-Eleven

July 13, 2015

Oakley, Inc. (“Oakley”) filed suit against 7-Eleven, Inc. (7-Eleven) on June 25, 2015 in the District Court for the Southern District of California. In its Complaint, Oakley alleges that certain products sold and/or offered for sale at 7-Eleven stores infringe the following design patents:

C&A Marketing Asserts Design Patent Infringement Claim Against GoPro’s Hero4 Session Camera

November 20, 2015

C&A Marketing, Inc. (“C&A Marketing”) filed suit against GoPro, Inc. (“GoPro”) on November 3, 2015 in the U.S. District Court District of New Jersey, alleging design patent infringement. More specifically, in it's complaint C&A Marketing alleges that GoPro's Hero4 Session, a cube-shaped "action" camera, infringes U.S. Patent No. D730,423 (the “D'423 patent”).

According to C&A Marketing, the D'423 patent protects the Polaroid Cube, created through C&A Marketing's capacity as the exclusive manufacturer, distributor, and marketer of Polaroid® brand mountable action cameras, among other Polaroid® brand products. Notably, C&A Marketing states that they launched the Polariod Cube in January 2014, at the Consumer Electronics Show (CES) in Las Vegas, Nevada, which was followed by GoPro's release of the "strikingly similar" Hero4 Session camera in 2015.

Dental Appliance Design Patents Asserted Again

February 2, 2018

GLO SCIENCE, INC. (“GLO SCIENCE”) recently asserted two design patents directed to mouthpieces against multiple parties in different jurisdictions. This is not the first time the two design patents have been asserted, however. The design patents have been asserted now at least eight times, leading to settlements in at least three of the cases. The multiple patent infringement suits and settlements, perhaps, underscore the valuable part design patents can play in a patent portfolio. As discussed before, some of the key advantages of design patents in the litigation context include that they are relatively difficult to invalidate, the alternative remedy of the “total profit” on an infringing “article of manufacture,” and injunction and exclusion order remedies.

Specifically, U.S. Patent Nos. D636,074 and D765,255 were asserted on January 30, 2018 against Oral Care Products, LLC in the U.S. District Court for the Southern District of New York (complaint) and against ANGELO DE SIMONE, TRUECOMPANY LIMITED, and MILLION DOLLAR SMILE, L.L.C in the U.S. District Court for the Southern District of California (complaint).