ITC

In re Certain Wind and Solar-Powered Light Posts and Street Lamps - ITC

October 21, 2010

As reported by Oblon Spivak’s ITC Blog, the ITC has instituted an investigation in response to a complaint asserting design patent rights for a solar-powered light post and street lamp design. The complainants, a set of New York, New York companies referred to as the Duggal companies, assert U.S. Patent No. D610,732 S (“the ‘732 patent”) for a Wind and Solar-Powered Light Post. The respondents are Gus Power Incorporated of Canada; Efston Science Inc. of Canada; King Luminaire, Inc., of Jefferson, OH; and The StressCrete Group of Canada. The complainants allege that the accused products are “substantially similar to,” or “virtually identical to,” the design protected by the ‘732 patent, citing specific incidences of alleged infringement. No other patents are asserted in the complaint.

The statute in 19 U.S.C. § 1337(a)(1)(B)(i)-(ii) makes no distinction between utility and design patents, but gives the ITC jurisdiction over any patent infringement meeting the other requirements of Section 337. In this case, the complainants report in their complaint that they have no other current litigation related to the ‘732 patent, thus resting the enforcement of their design patent rights on their requests to the ITC for an exclusion order and a cease-and-desist order.

Sam Adams Brewer Asks ITC To Block Beer Glasses

February 25, 2011

As reported on Oblon, Spivak’s ITC Blog, Boston Beer Corporation (“Boston Beer”) filed a complaintrequesting that the ITC commence an investigation pursuant to Section 337.

Boston Beer, which is a subsidiary of the brewer of Samuel Adams beer, alleges that 1 Source Signature Glassware, Inc., di Sciacca Co., and San Tan Brewing Co. (collectively, the “Proposed Respondents”) — all of Chandler, Arizona — unlawfully import into the U.S. and/or sell within the U.S. after importation certain glassware that infringes U.S. Patent Nos. D582,213 and D569,189 (collectively, the “asserted patents”).

Chrysler’s ITC Complaint alleging Design Patent Infringement of a Concept Vehicle Results in Settlement, Cease and Desist Orders

March 17, 2011

Chrysler’s ITC Complaint alleging Design Patent Infringement of a Concept Vehicle Results in Settlement, Cease and Desist Orders and Limited Exclusion Orders

See our posting on the ITC 337 Law Blog of March 16, 2011.

ITC Investigates Certain Protective Cases and Components Thereof

June 28, 2011

As reported on Oblon’s ITC blog , the U.S. International Trade Commission (“ITC”) has instituted an investigation in response to a complaint filed byOtter Products, LLC alleging violation of Section 337 in the importation into the U.S. and sale of certain protective cases and components thereof that infringe certain U.S. patents and trademarks. The complaint identifies twenty-nine respondents, including Alibaba.com and other Chinese and American companies.

The asserted design patents are U.S. Design Patent Nos. D600,908, D617,784, D615,536, D617,785, D634,741, and D636,386. According to the complaint, these design patents “protect the ornamental features of Otter Products’ unique protective case designs for handheld electronic devices, including smart phones, tablet computers, and other mobile devices.” Some of the figures from these patents are reproduced below.

Innovative Design Protection and Piracy Prevention Act

July 13, 2011

The Subcommittee on Intellectual Property, Competition and the Internet has scheduled a Hearing on H.R. 2511, the "Innovative Design Protection and Piracy Prevention Act," [IDPPPA] for Friday 7/15/2011 at 10:00 A.M.

We previously posted on the IDPPPA and we will post a follow-up on Friday with details of the Hearing.

Apple files ITC complaint against Samsung

July 13, 2011

As reported in the ITC blog , Apple filed an ITC complaint against Samsung on July 8, 2011, alleging certain portable electronic devices and related software infringe claims of U.S. 7,844,915, 7,469,381, 7,084,859, 7,920,129 and 6,956,564. This ITC complaint follows the ITC complaint Samsung filed against Apple on June 28, 2011. As in that complaint, this complaint also presumably relates to the ongoing dispute we have been covering between Samsung and Apple.

Apple v. Samsung: Showdown at the ITC

August 3, 2011

As reported in the ITC Blog, on August 2, 2011, the ITC instituted an investigation concerning Samsung's alleged infringement of U.S. Patent Nos. 7,479,949, RE 41,922, 7,863,533, 7,789,697, 7,912,501, D558,757 and D618,678. This investigation is the result of a complaint filed on July 5, 2011, and a supplemental letter filed on July 22, 2011, by Apple.

Figs. 1 and 2 of U.S. D558,757 (left) and D618,678 (right) are reproduced below.

Apple v. Samsung: ITC Initial Determination

October 25, 2012

On October 24, 2012, the ITC issued an "Initial Determination on Violation of Section 337," in Inv. No. 337-TA-796. In this case, Apple alleged Samsung had imported various infringing devices (smartphones and tablets) into the U.S.

In summary, ALJ Tomas B. Pender determined that a violation of Section 337 of the Tariff Act of 1930 has been found in connection with several utility patents and U.S. Design Patent No. D618,678 (Fig. 1 of which is reproduced below). ALJ Pender also concluded that this patent is not invalid.

Coming out of the dark ages

April 3, 2014

About 12 years ago, in 2002, I co-authored an article entitled “U.S. Design Patents: an underdog that bites.” The article announced a coming-out stage for design patents:

Companies often seek broad protection for their products and technology, along with strong enforcement provisions, preferably available at a relatively low cost and via a relatively fast procedure. In the past, however, companies have often overlooked a tool that can provide such protection: the US design patent. Instead, companies have focused on trade dress protection and utility patents. In many companies, the trade mark department considered design patents to add little to trade dress protection, while the patent department considered them an inadequate tool to protect their functional inventions. As a result, design patents often fell through the cracks.

Toyo Successful in Enforcing Its Design Patents at the International Trade Commission (ITC)

August 1, 2014

The U.S. International Trade Commission (ITC) recently concluded its investigation into "Certain Tires and Products Containing Same" (Investigation No. 337-TA-894), finding in favor of Toyo Tire & Rubber Co. Ltd. of Japan (hereinafter "Toyo") et al. against a sizable number of non-U.S.- and U.S.-based tire companies. A link to the notice is provided here.

In particular, previously finding certain respondents in default, the ITC issued (1) a limited exclusion order against respondents' infringing products, and (2) cease and desist orders directed against each of the Defaulting Respondents. The following Toyo design patents, directed to tire tread designs and tire sidewall designs, formed the basis for the orders:

US D487,424;
US D610,976;
US D610,977;
US D626,913; and
US D458,214.

Previously reported here, the orders followed Toyo's complaint filed August 14, 2013 and the ITC's subsequent decision to institute an investigation on September 16, 2013. As summarized in the Notice, the supplemented complaint alleged violation of section 337 by reason of infringement of the above-indicated design patents, as well as US D610,975; US D615,031; and US D653,200. The complaint and notice were subsequently amended to add Shandong Hengyu Science & Technology Co., Ltd. as a respondent, and several respondents were terminated from the investigation based on settlement agreements and consent orders.

ITC Terminates Design Patent-Based 337 Investigation

September 2, 2016

The International Trade Commission (ITC) recently terminated a Section 337 investigation, Certain Quartz Slabs and Portions Thereof (II)(Inv. No. 337-TA-1017), which involved U.S. Patent Nos. (1) D712,666; (2) D712,670; (3) D751,298; (4) D712,161; and (5) D737,058.

Discussed in detail on the Oblon ITC 337 Law Blog here and here, notably, the case involved the assertion of only design patents, the above-identified design patents, directed to quartz slabs. Also, the Commission declined to send the case to the ITC's Early Disposition Pilot Program, because Respondents' request that the Commission utilize the Early Disposition Pilot Program relates to only two of the five asserted design patents, and therefore does not involve a case dispositive issue, and use of the Early Disposition Pilot Program in this particular scenario would unduly delay resolution of the entire investigation.