Patent Infringement

Gillette Design Patent Enforcement

February 11, 2014
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).

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Skyline Design Patent Complaints

February 25, 2014
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).

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Mulch v. Novel - Request for Declaratory Judgment

March 14, 2014
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.

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What about Tesla’s Design Patents?

June 17, 2014
Tesla Motors announced in a blog post on June 12, 2014 that Tesla “will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.” It appears that Tesla’s goal is encourage the expansion of electric vehicle technology “in the spirit of the open source movement.” Tesla has been issued hundreds of utility patents since its inception.  It remains to be seen if this strategy will work to Tesla’s advantage and if other companies will follow suit.

But what about Tesla’s design Patents?

Tesla is active with design patents.  Over the last two years, Tesla has been issued several design patents that range from wheels to vehicle display mounts and vehicle designs.  Additional design patents are probably on their way.  The table below lists the design patents that have been issued to Tesla.

Tesla probably would not view copying or even improvement on its design patents as a “good faith” use of their technology.  Opening up Tesla’s designs to its competition would hardly advance electric vehicle technology.  Design patents, which are ornamental in nature, help a company differentiate itself from its competition, establish goodwill, and provide a strong source of protection.  Tesla would probably view any use of its designs by its competitors as “bad faith.” 

Likely, the last thing Tesla would want to see is a fleet of electric cars from multiple manufacturers that look exactly like Tesla’s vehicle designs.  Nor would Tesla likely be pleased to see a competitor design an internal combustion engine vehicle that copies Tesla’s Model S.



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Skechers v. Fila

July 7, 2014

Skechers USA filed a complaint against Fila in the Central District of California-Western Division, alleging infringement of US D661,884 and US D688,446, both directed to slip-on shoes, and alleging unfair competition and trade dress infringement of trade dress rights in Skechers Go Walk(R) shoe.

The complaint states a letter providing written notice of infringement was sent to Fila in July 2013, and in August 2013, Fila agreed to cease making the allegedly infringing shoe, the Amazen Memory Moc (referred to as "Version 1").  Allegedly, Fila stated it redesigned the Amazen Memory Moc (the redesign referred to as "Version 2") and agreed to cease manufacture of Version 1.  However, the Complaint states Version 1 "is still available for purchase nearly one year after Skechers' written notice." Complaint, pages 3 and 20.

Version 1 is alleged to infringe the trade dress of the Skechers Go Walk(R) shoe as well as both US D661,884 and US D688,446, while Version 2 is alleged to infringe only US D661,884.  Images from the complaint embodying the allegations are reproduced below:

[US D661,884]

[US D688,446]

[Trade Dress illustration: Skechers Go Walk(R) (top); Fila Amazen Memory Moc (Version 1) (bottom)]

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Ugg! Deckers' Design Patent Infringement Claim Is Not Kicked to the Curb

September 15, 2014
On September 8, 2014, Judge Otis D. Wright, II, U.S. Dist. Ct., C.D. Calif., issued an Order keeping alive a claim for design patent infringement while booting other asserted claims in a Motion to Dismiss under F.R.C.P. 12(b)(6). See Deckers Outdoor Corp. v. J.C. Penney Co., Inc., C.D. Cal., Case No. 2:14-cv-02565-ODW(MANx) (“Order Granting in Part Motion to Dismiss with Partial Leave to Amend,” Doc. 30, Sept. 8, 2014).

Deckers Outdoor Corporation (“Deckers”) is known for its famous UGG® sheepskin and suede boots, among other products, sold online and at retail stores throughout the U.S. According to Deckers, its UGG® line of boots began a metaphorical ascent into the stratosphere after being featured on Oprah Winfrey’s television show in 2000, when Oprah supposedly “emphatically declared … how much she ‘LOOOOOVES her UGG boots.’” See First Amended Complaint, Doc. 18, ¶ 12. This ascent continued, as many well-heeled celebrities embraced the boots and were photographed wearing them. With such a stamp of fashion approval, one can easily understand that Deckers would do whatever it could to protect its valuable image, brand, and products from harm by imitators seeking to capitalize on Deckers’ success.
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Riddell Sues Rawlings for Infringement of Design Patent Directed to Sports Helmet

January 8, 2015
Riddell, Inc. (“Riddell”) filed a complaint against Rawlings Sporting Goods Company, Inc. (“Rawlings”) in the Northern District of Illinois alleging infringement of various patents related to sports equipment, including U.S. Pat. No. D603,100to a Sports Helmet. Figures from the patent are provided below.
RiddellFig1RiddellFig4















The complaint alleges that the claimed design is infringed by Rawlings’ sports helmets, including at least the Tachyon, Impulse, Quantum, Momentum, and Force model name football helmets and the baseball helmets identified with S100, S90, S80, and S70 series name.
RawlingsQuantumRawlingsS90PA
    Rawlings Quantum                      Rawlings S90PA

The complaint did not include images of the allegedly infringing helmets. However, the Rawlings helmets above, which were found via an online search, appear to have the same names as those listed in the complaint.

Interestingly, the complaint alleges that Rawlings had knowledge of U.S. Pat. No. D603,100, for example, because it was cited on Rawlings’ U.S. Pat. No. D699,895.
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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”).
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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.
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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: 
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Design Patent Litigations Chart Their Own Course

July 28, 2015
Design patent litigations have frequently been in the news the past few years, particularly since Apple and Samsung began battling against each other in the Northern District of California. With the America Invents Act (AIA) also affecting the number of utility patent cases that have been filed, we wondered whether the number of design patent litigations has increased or decreased over the past few years. While the statistics we reviewed indicate no clear trend, we suggest three conclusions that might be drawn from the statistics.
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Lumetique, Inc. v. Blyth, Inc. and PartyLite Gifts, Inc.

September 11, 2015
Lumetique, Inc. (“Lumetique”) filed suit against Blyth, Inc. and PartyLite Gifts, Inc. (collectively, “Defendants”) on September 4, 2015 in the District Court for the District of Connecticut. Please note that Oblon represents Lumetique in this matter.

In its Complaint, Lumetique alleges that “Defendants manufacture, import, offer for sale, and sell certain candle products, including the Nature’s Light series of candles” that infringe two utility patents and two design patents. Specifically, the Complaint alleges that Defendants infringe U.S. Patent Nos. 8,961,171; 9,039,409; D643,554; and D644,359.  By way of example, Figure 1 from D644,359 and Figure 1 from D643,554 are provided below, respectively:
image2Image1


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Hoist v. Health In Motion, Inspire Fitness and Sunset Swings, and Does 1-10

September 24, 2015
Hoist Fitness Systems, Inc. (“Hoist”) filed a Complaint against Health In Motion, LLC (“Health In Motion”), Inspire Fitness and Sunset Swings (“Inspire Fitness”), and Does 1-10 (collectively, “Defendants”) on August 31, 2015 in the District Court for the Southern District of California. Incidentally, the Complaint specifies that the fictitious defendants named “Does 1-10” “include, but are not limited to, any subsidiaries, affiliates, and/or parent companies of Health In Motion.”

In its Complaint, Hoist alleges “patent infringement, trade dress infringement, unfair competition, and unjust enrichment with regard to Hoist’s intellectual property rights.”
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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.
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Robert Gordon Industries and Thermos Tussle Over Tumbler Design Patent

December 13, 2015

Robert Gordon Industries, Ltd. ("Robert Gordon”) filed a complaint for declaratory judgment of noninfringement against Thermos, LLC (“Thermos”) on November 18, 2015 in the U.S. District Court for the Eastern District of New York.  Meanwhile, Thermos filed its own patent infringement action against Robert Gordon in the U.S. District Court for the Northern District of Illinois Eastern Division, also on November 18, 2015.

According to Robert Gordon, the declaratory judgment action was filed as a result of Thermos' continued efforts “to extract a royalty payment under two Thermos patents; United States Patent No. D622,547entitled 'Tumbler' ('the ‘547 patent') and United States Patent No. 8,348,078entitled 'Leak Proof Drinking Lid With Pressure Relief' ('the ‘078 patent')," with regard to Robert Gordon’s Empire VM-57 Tumbler, despite Robert Gordon's willingness to discontinue this product and pay Thermos a $3,000.00 royalty (based on 5% of past sales).  Robert Gordon seeks a jury trial to obtain a declaratory judgment of non-infringement and invalidity of each of the aforementioned Thermos patents. 

For its part, Thermos asserted that Robert Gordon has "manufactured, imported, sold and/or offered for sale tumblers...in the United States that infringe the '547 patent," such as tumbler "SKU # VM-57 Silver" offered for sale on Robert Gordon's website.   

Shown below, from left to right, are patent illustrations corresponding to Thermos' '547 patent (tumbler) and '078 patent (lid) and an image showing Robert Gordon's accused Empire VM-57 tumbler (based on Exhibit B from Thermos' complaint), respectively. 

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Nike Files Suit Against Skechers Alleging Infringement of Eight Design Patents

February 1, 2016
NIKE, Inc. (“Nike”) filed suit against Skechers U.S.A., Inc. (“Skechers”) on January 4, 2016 in the United States District Court for the District of Oregon, Portland Division, seeking to recover damages and costs from Skechers. In the complaint, Nike alleges Skechers infringes eight Nike design patents issued between January 7, 2014 and March 31, 2015 pertaining to shoe “uppers” and shoe soles (see Table 1 below from the complaint).
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Microsoft Alleges Corel Infringes Design Patents Directed to Graphical User Interfaces (GUIs)

February 9, 2016
Microsoft Corporation ("Microsoft") filed suit against Corel Corporation and Corel Inc. (“Corel”) in the Northern District Court of California, seeking to recover damages and costs for patent infringement.

In the complaint, Microsoft alleges Corel willfully infringes a number of Microsoft utility and design patents.  In particular, Microsoft accuses Corel of infringing U.S. Patent Nos. 8,255,828 (“the ‘828 patent”); 7,703,036 (“the ‘036 patent”); 7,047,501 (“the ‘501 patent”); 5,715,415 (“the ‘415 patent”); 5,510,980 (“the ‘980 patent”); D550,237 (“the D‘237 patent”); D554,140(“the D‘140 patent”); D564,532 (“the D‘532 patent”); and D570,865 (“the D‘865 patent”), all relating to aspects of graphical user interfaces ("GUIs") used in productivity software applications, such as Microsoft Office.

The four design patents forming the basis for part of the complaint are directed to "ornamental designs for parts of Microsoft user interfaces, including the Microsoft Ribbon" and, according to Microsoft, "Corel's advertising makes the copied Microsoft interfaces one of the central selling points of Corel's products:  'With a familiar Ribbon-style interface, Corel® Office looks like the office software you're used to, making it easy to get to work right away.'" 

Accused Corel products associated with the asserted design patents include CorelCAD 2014-2016 and Corel Home Office, which includes Corel Write, Corel Calculate, and Corel Show.
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BMW Group Files Suit Against TurboSquid

May 9, 2016
Bayerische Motoren Werke AG, BMW of North America, LLC, Rolls-Royce Motor Cars Limited, and Rolls-Royce Motor Cars NA, LLC (collectively “BMW Group”) filed suit against TurboSquid, Inc. (“TurboSquid”) on May 3, 2016 in the United States District Court for the District of New Jersey, alleging infringement of BMW Group’s design patents, trademarks, and trade dress.

BMW Group is seeking a permanent injunction for infringement, destruction of products, advertisements, and packaging in TurboSquid’s possession or control bearing BMW Group’s trademarks or trade dress, and recovery of TurboSquid’s profits from the alleged infringement, treble actual damages, and reasonable expenses.

The design patents detailed in the suit include six BMW Group design patents pertaining to BMW, Mini, and Rolls-Royce branded vehicles produced by BMW Group. These are design patents D473,165, D639,209, D664,896, D714,190, D714,687, and D724,495. The ’165 patent is titled “Surface configuration of a vehicle, toy and miscellaneous consumer products incorporating the design,” and the other patents are each titled “Vehicle, toy, and/or replicas thereof.” For illustrative purposes, images from the design patents are shown below.
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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).
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Ugg! Deckers Doesn’t Want Anyone To “Muk” Around With Their Design Patent

February 16, 2018
A few years ago, I wrote an article (available here) about Deckers’ mixed success in a 2014 lawsuit against retailers JC Penney, Wal-Mart, Sears, and Dreams Footwear, for design patent infringement, trade dress infringement, and unfair competition, among other asserted causes of action, in the U.S. District Court, Central District of California. Since then, Deckers has tangled its laces with many other defendants over similar issues—the majority of which were before the same court.

Well, Deckers hiked back to court on Valentine’s Day to profess that there is no love for those who might tread on their design patents. Deckers laced up another five pronged Complaint—this time against Reliable Knitting Works, Wal-Mart Stores, Inc., and 10 other unnamed defendants—and filed suit in the Central District of California. See Deckers Outdoor Corp. v. Reliable Knitting Works and Wal-Mart Stores, Inc., C.D. Cal., Case No. 2:18-cv-01217 (Feb. 14, 2018).
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