Design Patents

Déjà vu - Crocs sues Skechers for Design Infringement

May 24, 2011
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 CROCBANDTMmodel 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.
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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.
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History of U.S. Design Protection

June 22, 2011
An interesting article on design patents has been recently written by Jason DuMont of the Max Planck Institute for Intellectual Property & Competition Law and Mark Janis of the Indiana University Maurer School of Law.  The article, entitled “The Origins of American Design Protection,” traces the origins and progression of U.S. design protection, and calls for a return of design protection in the U.S. back to its roots (although the U.S. Congress is not currently contemplating any such changes).

The Abstract of the article is as follows:
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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.
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Update on Apple v. Samsung

July 13, 2011
Further to our coverage of the ongoing Apple v. Samsung litigation, Apple filed a motion for preliminary injunction on July 1, 2011.  Apple also filed motions for an expedited trial and for shortening the time for the briefing process in the expedited trial.

On July 12, 2011, Judge Lucy Koh denied the motion to shorten time.  However, the motion for preliminary injunction and motion for an expedited trial are still pending.
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Vibram asserts minimalist footwear patents

July 20, 2011
Vibram has filed a complaint against Fila USA Inc. in the District of Massachusetts alleging infringement of Design Patent Nos. D579,181 ("the '181 patent") and D582,134 ("the '134 patent), and U.S. Utility Patent No. 7,805,860.  According to the complaint, Vibram markets the popular FiveFingers footwear products, which fill the need for "footwear... which allows independent intrinsic movement of the feet, and particularly the toes... and yet which still provides coverage and protection to the toes... ."

Vibram alleges Fila's skele-toes products infringe the '181 and '134 patents.  A copy of the comparison provided on page 7 of the complaint is reproduced below.
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USPTO’s Rule 56 “But For-Plus” Proposal

July 26, 2011
As we previously reported, the Court of Appeals for the Federal Circuit released in May 2011 its long-awaited decision in Therasense, Inc. v. Becton Dickinson and Co., in which it raised the standard for proving inequitable conduct and rendering a patent unenforceable.  The defense of inequitable conduct applies to both utility and design patents.  Last year, we reported on a design patent litigation where this defense was raised.

The Therasensedecision redefined the type of information that can potentially support a defense of inequitable conduct if it is withheld, misleading, or incorrect -- i.e., what constitutes “material” information.  Under the new standard, information is material only “if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.”  The Federal Circuit refers to this as the “but for” standard.
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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.
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Nike Accused of Infringing Golf Club Design Patents

August 12, 2011
The Irrevocable Trust of Anthony J. Antonious sued Nike for infringement of U.S. Patent Numbers D481,090 and D481,091, issued in October 2003, each covering a “Metalwood type golf club head.” The suit, filed in the U.S. District Court of New Jersey, seeks actual damages, treble damages, interest, and attorneys’ fees and costs.

The Trust alleges that Nike sold infringing golf clubs under the SQ Sumo and SQ Sasquatch names from 2008-2010.
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Daimler Sues Over Alleged smart fortwo Knockoffs

August 18, 2011
Daimler AG filed a Complaint in the Eastern District of Michigan against Shuanghuan Automobile Company, Shuanghuan Auto USA, and Wheego Electric Cars, Inc. for trademark and trade dress infringement, trademark counterfeiting, trademark dilution, and patent infringement related to Daimler’s smart fortwo cars.  The design patents at issue are U.S. Patent Number D389,783, U.S. Patent Number D477,250, and U.S. Patent Number D549,134.
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Apple v. Samsung: Update August 26, 2011

August 26, 2011
Since our last update, Apple has succeeded in obtaining a trial date of July 30, 2012, in the Northern District of California (this relates to Apple's U.S. federal claim against Samsung).

Also, a Dutch court ordered an injunction against Samsung's Galaxy smartphones (but not the tablet) based on a software-related patent.  Samsung stated it would modify the software in its phones to work around the patent.
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Apple v. Samsung: Update October 17, 2011

October 17, 2011
As reported by Reuters, U.S. District Judge Lucy Koh has commented on the case in a court hearing on Thursday, October 13, 2011, but has not yet ruled on a pending motion for a preliminary injunction to bar some of the Samsung Galaxy products from being sold in the U.S.

Reportedly, Judge Koh frequently remarkedon similarities between the Samsung Galaxy Tab 10.1 and the Apple iPad, and even questioned Samsung's attorneys as whether they could identify Samsung's tablet between the two.
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Keurig Sues Rogers Family Co. Over Single-Serve Coffee Container Design

November 11, 2011
Keurig has filed suit against Rogers Family Co. (“Rogers”) in the U.S. District Court for the District of Massachusetts alleging that beverage containers sold by Rogers infringe one design patent and two utility patents.  The complaint states that the beverage containers sold by Rogers, such as its “OneCups,” are for use with Keurig’s single-serve brewers. The design patent in suit is U.S. Patent No. D502,362. 
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Crocs, Inc. files complaint against Walgreen Co. alleging footwear design infringement

November 18, 2011
Crocs, Inc. filed a complaint against Walgreen Co. in the U.S. District Court for the District of Colorado on November 11, 2011.  The complaint alleges that Walgreen “manufactures, uses, offers for sale, sells, and/or imports molded footwear throughout the United States” that infringe a design patent (U.S. Patent No. D610,784, hereinafter “the ‘784 patent”) and a utility patent (U.S. Patent No. 6,993,858 B2) assigned to Crocs.  In particular, the complaint alleges that the “Caribbean Cartel” footwear sold by Walgreen are “obvious imitations of well-known and successful Crocs styles.”  Although the specific designs of the alleged infringing footwear are unknown, images of Caribbean Cartel The Lost Pirates footwear, taken from eBay.com (last visited Nov. 16, 2011), are shown below.  Figure 1 from U.S. D610,784 is shown to the right.
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Apple v. Samsung: "Design Around" in Germany

November 21, 2011
On November 16, 2011, FOSS Patents reported on Samsung releasing an updated version of the Samsung Galaxy Tab 10.1 with a revised visual design.  This updated version is expected to available for sale in Germany shortly.

The revised tablet is now called the Galaxy Tab 10.1N.  Does this Nrefer to Non-infringing?
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Design Patent article at IPWatchdog

December 23, 2011
IPWatchdog has posted an article titled "Design Patent: The Under Utilized and Overlooked Patent," by Gene Quinn.

Mr. Quinn discusses design patents in general, and notes the importance of the Egyption Goddess ruling. He also provides the following graph, illustrating design patent filing and issuance numbers.
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Nestlé continues Trend of Recent Consumer Products Design Patent Complaints

January 31, 2012
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. 
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New proposed legislation to create design patent infringement exceptions for motor vehicle parts

February 6, 2012
On February 2, 2012, Representatives Darrell Issa (R-Calif.) and Rep. Zoe Lofgren (D-Calif.), members of the House Judiciary Committee, introduced H.R. 3889, a bill entitled the Promoting Automotive Repair, Trade, and Sales (PARTS) Act.

The proposed bill would create exceptions from acts of infringement under 35 USC 271 for certain component parts of motor vehicles.  Under the PARTS Act, with respect to a design patent that claims a component part of a motor vehicle as originally manufactured, “it shall not be an act of infringement of such design patent to make or offer to sell within the United States, or import into the United States, any article of manufacture that is similar or the same in appearance to the component part that is claimed in such design patent if the purpose of such article of manufacture is for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured.”
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Skechers files a complaint alleging footwear design infringement

February 7, 2012
Skechers U.S.A., Inc. filed a complaint against The Children’s Place Retail Stores, Inc., on February 2, 2012 (case number 2:2012-cv-00928 in the U.S. District Court for the Central District of California) alleging that Children’s Place manufactures, imports, sells, and offers to sell a line of footwear that “embodies and infringes the patented invention” disclosed in Skechers’s U.S. Design Patent D571,095.

The design patent at issue claims the ornamental design for a “crystal-covered show toe cap,” shown below.
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OAKLEY FILES SUIT AGAINST UVEX OVER SUNGLASSES PATENTS

February 10, 2012
Oakley, Inc. (“Oakley”) filed suit against Uvex Sports, Inc. (“Uvex”) on February 3, 2012, in the in the U.S. District Court for the Central District of California.  Oakley alleges that certain Uvex products infringe U.S. patent no. 5,638,145 (“the ‘145 patent”), D557,325 (“the D325 patent”), or D556,818 (“the D818 patent”).

Specifically, the Complaint lists Uvex’s Rage product as infringing the D325 patent.  One of the commercially available Uvex Rage glasses is shown below to the left, with Fig. 1 of the D325 patent to the right.
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Copyright © Oblon, McClelland, Maier & Neustadt, L.L.P. | Disclaimer
The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important design patent issues. These postings are in no way representative of the opinions of the Oblon firm, or its clients, but rather the personal views of the individual authors.