District Court

Keurig v. Rogers: Dismissed on Summary Judgment

June 10, 2013
Following up on our earlier post, Keurig’s suit against Rogers Family Co. (“Rogers”) has been dismissed on summary judgment.  The district court granted Rogers’ motion for summary judgment of non-infringement of U.S. Patent No. D502,362 and two utility patents.

In a Memorandum and Order on Summary Judgment (“Order”), the court compared the accused product with the claimed design in order to determine if the two are plainly dissimilar.  The following is a comparison provided on page 12 of the Order:


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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.

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.
    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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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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Munchkin v. Luv N’Care – CAFC Affirms PTAB

April 16, 2015
On April 14, 2015, the U.S. Court of Appeals for the Federal Circuit ("CAFC") affirmed the Patent Trial and Appeal Board’s decision that Luv N' Care's U.S. Patent Number D617,465 ("the '465 patent") was unpatentable. The PTAB’s decision was the first inter partes review initiated by the USPTO for a design patent. The CAFC issued a Rule 36 judgment that affirmed this decision without opinion.  For reference, Figures 2 and 3 from the '465 patent are provided below.   

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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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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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Apple v. Samsung, New Damages Trial Ordered Applying New Test

October 25, 2017
On October 22, 2017, Judge Lucy Koh ordered a new trial on design patent damages in the long-running dispute between Apple and Samsung playing out its latest chapter in the U.S. District Court for the Northern District of California. Case No. 11-CV-01846-LHK, ECF No. 3530 (“Order”).

After the U.S. Supreme Court held that an “article of manufacture” in 35 U.S.C. § 289 (damages provision specific to design patents) could apply to either an article sold to a consumer or a component of the product, the case was remanded to determine whether a new trial was needed on the $399 million award Apple had obtained for Samsung’s infringement of several design patents.

As part of her analysis, Judge Koh also had to determine a new test for design patent damages under Section 289. Rejecting the tests offered by both Apple and Samsung, Judge Koh adopted the government’s suggestion, stating in conclusion:
The test for determining the article of manufacture for the purpose of § 289 shall be the following four factors:
• The scope of the design claimed in the plaintiff’s patent, including the drawing and written description;
• The relative prominence of the design within the product as a whole;
• Whether the design is conceptually distinct from the product as a whole; and
• The physical relationship between the patented design and the rest of the product, including whether the design pertains to a component that a user or seller can physically separate from the product as a whole, and whether the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately.
The plaintiff shall bear the burden of persuasion on identifying the relevant article of manufacture and proving the amount of total profit on the sale of that article. The plaintiff also shall bear an initial burden of production on identifying the relevant article of manufacture and proving the amount of total profit on the sale of that article. If the plaintiff satisfies its burden of production on these issues, the burden of production shifts to the defendant to come forward with evidence of an alternative article of manufacture. Order at 35.

Judge Koh also observed that the government’s test had largely been adopted by the one other court confronted with the same question. Order at 21, citing Jury Instructions at 15-16, Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., No. 3:17-cv-01781-HZ (S.D. Cal. Sept. 9, 2017), ECF No. 378. 

A new trial is expected in May 2018.  Interestingly, both parties indicated they could generally accept the government’s test (see Order at 13-14, 20), suggesting that each side believes the test is sufficiently flexible to support their point of view. As with all developments in this case, the trial will be closely watched, and another appeal is all but certain absent settlement.

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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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