Design Patents

NIKE files a complaint alleging footwear design infringement

February 10, 2012

NIKE, Inc. filed a complaintagainst QiLoo International Limited, a Chinese company, on February 6, 2012 (case number 2:2012-cv-00191 in the U.S. District Court for the District of Nevada), alleging infringement of 23 U.S. design patents, listed below.

D361,884 D500,585 D546,541 D578,294

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.

Lindby Custom successfully enforces a design for motorcycle parts, but would the proposed PARTS legislation have affected the court’s ruling?

February 22, 2012

On February 15, 2012, the U.S. District Court for the Central District of California entered Default Judgment in the matter of Lindby Custom, Inc. v. AMI Group (case no. 8:10-cv-01779). In its Complaint, Lindby Custom alleged infringement of U.S. Design Patent D548,142 (“the D142 patent”), in addition to trade dress and unfair competition claims.

The D142 patent claims “the ornamental design for the combined engine guard and highway peg” for motorcycles, shown below.

USPTO Proposes Dramatic Design Patent Fee Increases

February 23, 2012

The USPTO has proposed fee increases in addition to the already implemented 15% surcharge.

Concerning Design Patents, the proposal sets several modest fee increases, while others are quite substantial. Namely, the proposed Design Patent Examination and Search Fees would each increase by several hundred dollars. The following table compares current and proposed large entity fees. The proposed small and micro entities fees are, respectively, 50% and 25% of the large entity fees.

Oakley drops utility patent claims and proceeds with design claim following Markman hearing; court declines to construe the design claim

March 12, 2012

On March 5, 2012, Oakley entered into a Covenant Not to Sue either Predator Outdoor Products or Hunter Specialties under U.S. utility patent 5,387,949 (“the ‘949 patent”). The covenant not to sue was executed on the same day as the Markman hearing in the matter of Oakley v. Predator Outdoor Products et al. (case no. 8:2011-cv-00456, in the U.S. District Court for the Central District of California).

As we previously reported, Oakley originally alleged infringement of both the ‘949 patent and the U.S. design patent D523,461 (“the D461 patent”). However, as a result of the covenant not to sue under the utility patent, the D461 patent is currently the only remaining patent at issue in this case.

Digest of new and closed design patent cases from Feb. 6 to Mar. 16, 2012

March 16, 2012

We have found it helpful, and interesting, to track newly filed and closed design patent cases on a weekly basis. In hope that readers of our Protecting Designs Blog might benefit as well, we have tabulated our search results over the period from February 6 to March 16, 2012, and posted them here.

During this six week period, we identified 15 newly filed cases and 20 closed cases that assert a cause of action involving a design patent. Of the closed cases identified, the average pendency of the litigation was 0.6 years, where the maximum and minimum pendencies were 1.6 years and 4 days, respectively.

Digest of new and closed design patent cases from Mar. 19 to April 6, 2012

April 11, 2012

In light of the positive response we received from our earlier Design Patent Digest post, we decided to post another. A table of newly filed and closed design patent cases from March 19, 2012, to April 6, 2012, including a handful of earlier cases not identified in our previous search, is posted here. Over this three week period, we identified 20 new cases and 10 closed cases involving a design patent.

Some cases that we found particularly interesting are mentioned below.

Digest of new and closed design patent cases from April 9-20, 2012

April 24, 2012

Wal-Mart and Oakley were among the parties to 8 newly-filed cases and 5 closed cases involving design patents during the two-week period of April 9-20, 2012. A tabulated summary of these cases is posted here. Some cases that we found particularly interesting are mentioned below.

Oakley, Inc.filed suit against Great L&H Trading, Inc. in the Central District of California alleging infringement of eyewear design and utility patents. On the same day, Great L&H Trading filed a correspondingdeclaratory judgment action in the Southern District of New York. This new case follows other Oakley eyewear design infringement suits that we previously reported on 02/10/12, 02/16/12, and 03/12/12. Links to the patents at issue in this case are listed below.

Apple v. Samsung: Settlement Conference

May 1, 2012

FOSS Patents has published a list of the 50+ pending Apple-Samsung lawsuits spanning the globe. Although the timely resolution of so many lawsuits may require divine intervention, Judge Lucy Koh (who is presiding over the lawsuits in the Northern District of California) "ordered the parties to comment on their availability for an Alternative Dispute Resolution (ADR) effort," as reported by FOSS Patents. As a result of Apple's and Samsung's responses, U.S. Magistrate Judge Spero will now preside over a settlement conference on May 21-22, 2012, in San Francisco.

Dyson files suit to enforce design and utility patents for its bladeless fan

May 4, 2012

Dyson, Inc. filed suit against Cornucopia Products in the District of Arizona to enforce design and utility patents directed to a bladeless fan. The design patents at issue, D602,143 and D605,748, both claim the ornamental design for a fan, as shown to the right. The D142 patent claim includes a cylindrical base, whereas the D748 claim is not limited by a base.

Apple V. Samsung: CAFC Appeal Decision

May 15, 2012

In December, 2011, Apple appealed Judge Lucy Koh's denial of a preliminary injunction in the pending lawsuit in the U.S. District Court for the Northern District of California with respect to four Apple patents:

D618,677, which is alleged to be infringed by Samsung's Infuse 4G and Galaxy S 4G smartphones;

Apple V. Samsung: CAFC Appeal Decision - The Dissent

May 17, 2012

Further to our prior post concerning the recent CAFC Appeal Decision, on May 14, 2012, the Federal Circuit reversed and remanded the district court’s decision to deny a preliminary injunction to plaintiff Apple for its design patent D504,889 for a tablet. The Federal Circuit affirmed the district court's decision denying a preliminary injunction with regard to two other design patents and a utility patent drawn to smartphones.

The dissent by circuit Judge O'Malley urged the majority to immediately enter a preliminary injunction for design patent D504,889. The majority remanded the decision to the district court to complete the analysis of the balance of the hardship factors and the public interest factors, which were only performed for the smartphone patents by the district court. The dissent argues that these factors favor Apple with respect to the tablet patent D504,889, and that this analysis should not be remanded to the district court, as the delay would further prejudice Apple. In particular, Judge O'Malley stated on p. 2 of the dissent that:

Captain Morgan sued for beverage packaging design infringement

May 31, 2012

American Beverage Corp. (ABC) and Pouch Pac Innovations filed suit against Diageo and its subsidiary, the Captain Morgan Co., in the Western District of Pennsylvania alleging, inter alia, design patent infringement. The complaint alleges that the defendants infringe the plaintiffs' design patent, D571,672, which claims "the ornamental design for a flexible pouch." Figures from the design patent at issue are shown to the right.

An image of a commercial embodiment of the claimed design, as used for ABC's Dailey's Cocktails, is show below (left) alongside the defendants' Parrot Bay Cocktail package (right), which is alleged to infringe the patented design.

Thule files suit alleging infringement of auto roof rack design

June 13, 2012

Thule, Inc. and Thule Sweden AB filed suit against Stachura Holdings, LLC, and its subsidiaries, AtomixAuto and roofrackforcars.com, and Strona Industrial Inc. in the District of Connecticut alleging infringement of Thule’s design and utility patents for automobile roof racks. The complaint alleges that the defendants infringe the plaintiffs’ design patent, D415,096, which claims “the ornamental design for a ski-carrier for vehicles.” A figure from the design patent at issue is shown to the right.

An image of Thule’s 92726 Universal Pull Top Rack, taken from their website (last visited 06/12/2012), is shown below.

Apple v. Samsung: Samsung records a win in the UK

July 9, 2012

Following Samsung's successful attempt for temporary relief from an injunction against their Galaxy Nexus smart phone, and Samsung's unsuccessful attempt for temporary relief from an injunction against their Galaxy Tab 10.1 tablet, seeBloomberg, British High Court Judge Colin Birss has issued ajudgment that at p. 39 states, with emphasis added:

The informed user’s overall impression of each of the Samsung Galaxy Tablets is the following. From the front they belong to the family which includes the Apple design; but the Samsung products are very thin, almost insubstantial members of that family with unusual details on the back. They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool. The overall impression produced is different.

Apple V. Samsung: Jury Verdict

August 24, 2012

Apple obtained a $1.05 billion verdict in the Northern District of California. The jury found that all of Apple's asserted patents were valid and enforceable. CNET has posted a color graphic outlining the devices found to be infringing, which also includes the trade dress claims. As to infringement of the design patents, the jury found the following (from pp. 6-7 of the verdict).

The D667 patent:

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: 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.

Patent Law Treaties Implementation Act of 2012

December 10, 2012

S. 3486 (the "Act") has passed the House and the Senate, and awaits signature by the President.

The summary of this Act reads, with emphasis added:

Federal Circuit Reverses Dismissal in Hall v. Bed Bath & Beyond, Inc.

January 30, 2013

The Federal Circuit reversed the district court’s sua sponte dismissal of a complaint filed by Mr. Robert J. Hall for patent infringement and other claims. The Federal Circuit opinion can be found here.

Mr. Hall accused Bed Bath & Beyond of infringing U.S. Design Patent No. D596,439 entitled “Towel Tote.” Fig. 1 from D596,439 is reproduced below.

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