The false marking statute (35 U.S.C. § 292) expressly authorizes members of the public to bring an action on behalf of the U.S. government (i.e., a qui tam action) for a product falsely marked with a patent number with the intent of deceiving the public.  Theoretically, the penalty for falsely marking a product can be a hefty one as the false marking statute allows the court to assess a sanction of up to $500 for every offense.  The Federal Circuit in Bon Tool held in late 2009 that “offense” means on a per article basis.  Ever since the Bon Tool decision, the number of false-marking lawsuits has surged because of the economic windfall that might result from mass-produced, falsely marked products.  Products marked with design patent numbers are not exempt from such actions. 


One recent complaint filed by Main Hastingsagainst the Village Company in the Eastern District of Texas alleges the Village Company violated § 292 by marking a Mr. Bubble bottle with design patent no. D-408,290 (“the ‘290 patent).  Specifically, Main Hastings alleges that the Village Company marked the Mr. Bubble bottle knowing that that the ‘290 patent does not cover the ornamental design of the Mr. Bubble bottle.  In Exhibit B of the complaint, Main Hastings sets forth a comparative analysis between two Mr. Bubble bottles and Figure 2 of the ‘290 patent to demonstrate the alleged false marking.  Included below are images from the second comparison of Exhibit B of Main Hastings’ complaint.


Share

Read More

As reported in Oblon Spivak’s Patents Post-Grant blog, the U.S. Court of Appeals for the Federal Circuit affirmed the patentability of Bank of America Corp.’s design patent for a miniature credit card, agreeing that a patent examiner erred in initially rejecting the patent claim as obvious.  The decision was made without explanation. 


A discussion of the inter partes reexamination that led to the Federal Circuit appeal can be found here.


Share
New protections for fashion designs may be on the horizon, as the Judiciary Committee has approved a modified version of the Innovative Design Protection and Piracy Prevention Act (the IDPPPA) for consideration by the Senate.  The IDPPPA would amend § 1301 et sec. of the copyright statute (Title 17) to include provisions expressly protecting fashion designs.  Presently, Title 17 is limited to protecting the design of a vessel hull, which is defined as the frame or body of a vessel, including the deck.


The IDPPPA is being advocated as necessary to address the problem of piracy in the fashion design world.  Several well-known fashion designers, the Council of Fashion Designers of America, and the American Apparel and Footwear Association have thrown their weight behind the IDPPPA, with the Council of Fashion Designers hosting a website called www.stopfashionpiracy.com to promote and track its progress.


Share

Read More

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.


Share

Read More

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.


Share

Read More