Filings and Decisions

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.

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.

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.

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.

Apple v Samsung – Design Patents Hold Firm, Trade Dress Gives Way

June 15, 2015

On May 18, 2015, the Federal Circuit issued its long-awaited decision on Samsung’s appeal of Apple’s nearly $930 million 2014 judgment for infringement of Apple’s design patents and utility patents covering various smart phones and tablets, and for dilution of its trade dresses. See Federal Circuit Appeal Nos. 2014-1335, 2015-1029. See also our previous discussions regarding the Apple-Samsung dispute here and here.

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:

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.

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:

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.”

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.

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.

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).

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.

Nike Files Suit Against Fujiann Bestwinn Alleging Design Patent Infringement

March 11, 2016

NIKE, Inc. (“Nike”) filed suit against Fujiann Bestwinn (China) Industry Co., Ltd. (“Bestwinn”) on February 17, 2016 in the United States District Court for the District of Nevada, alleging infringement of a number of Nike’s design patents for various aspects of athletic shoes.

In the complaint, Nike alleges Bestwinn infringes its design patents by attending the WSA trade show in Las Vegas, Nevada at least twice yearly and promoting and selling the infringing shoes.

The patents detailed in the suit include eighteen Nike design patents issued between April 26, 2011 and December 29, 2015 pertaining to Nike's shoe designs (see Table 1 below from the complaint).

Design Patents Remain a Valuable Part of a Patent Portfolio after Samsung v. Apple

February 2, 2017

On December 6, 2016, the U.S. Supreme Court issued its long awaited opinion addressing the issue of whether design patent owners were always entitled to an infringer’s total profits of any end product, even a multi-component product. Samsung Electronics Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016). The Supreme Court overturned the widely held understanding that design patent owners were always entitled to an infringer’s profits and held that total profits are not necessarily available where the patented design is one component of a multi-component product. Despite the Supreme Court’s ruling, and uncertainty in how its decision will be implemented, design patents remain a unique and valuable tool in a U.S. patent portfolio.

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).

When the Underdog Becomes a Top Dog

May 25, 2018

Almost 16 years ago, we wrote an article in Managing Intellectual Property (Nov. 2002, Issue 124) entitled U.S. DESIGN PATENTS: AN UNDERDOG THAT BITES. The article explained that companies had previously overlooked design patents, focusing instead on trade dress protection and utility patents. Yet, design patents provide their owners with the additional option of demanding the infringer's total profits under 35 USC 289. “This option may be advantageous, for example, when the infringer's total profits are substantially greater than any reasonable royalty.” “Companies are starting to appreciate the value of design patent protection and systematically consider whether their inventions deserve such protection.” Apple was such a company.

“Cover Up What You Don’t Want to See”: Advantek Marketing v. Shanghai Walk-Long Tools (Fed. Cir., Aug. 1, 2018)

August 10, 2018

Advantek obtained U.S. Design Patent No. D715,006(“D ’006”) on a “gazebo” without a cover, the gazebo essentially being a portable kennel. Figs. 1 and 2 from D ’006 are reproduced below.
Gazebo Image 1

During prosecution of the application that later became D ’006, the Examiner issued a Restriction Requirement. The Requirement split the application into two groups: a gazebo without a cover, and a gazebo with a cover. According to the Examiner, the “designs as grouped are distinct from each other….” Despite disagreeing with the Requirement, Advantek elected to prosecute the “gazebo without a cover” (as shown above) and cancelled a drawing that showed the gazebo with a cover. After further prosecution to overcome formalities objections and § 112 rejections, the D ’006 patent issued.

I burn, burn like a wicker chair; chalk white and oh-so frail…

September 16, 2019

The title above refers to a lyric from a 1998 song by Eve 6, although they used the word “cabinet” instead of “chair.” While this simple substitution of a word on my part is designed to evoke an image, the choice of words and the image evoked* can mean so much more in the world of design patents.

Yesterday, in Curver Luxembourg v. Home Expressions (Fed. Cir. Appeal No. 18-2214), the U.S. Court of Appeals for the Federal Circuit affirmed a District Court of New Jersey decision against plaintiff-appellant Curver Luxembourg. Curver sued Home Expressions for infringement of U.S. Design Patent No. D677,946, asserting that Home “makes and sells a basket that is identical to Curver’s basket in every way, including incorporating the patented overlapping “Y” design.” Home countered that its baskets could not possibly infringe Curver’s design patent, because the patent claim was limited to a chair. The district court agreed and dismissed the case, reasoning that Curver’s “original application was for a design on furniture. And what Curver got, as opposed to what it asked for, was a patent that protects against infringement for a particular “Y” design on chairs only.” Here, “in a case of first impression,” the Federal Circuit also agreed, holding that the scope of Curver’s U.S. design patent was limited to “an ornamental design for a pattern for a chair,” such that it did not read on Home’s baskets.

Columbia Sportswear Appeal Decision Covers Design Infringement; No Reflection on Damages

November 25, 2019

Last week, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion in Columbia Sportswear v. Seirus Innovative Accessories (No. 2018-1329, 2018-1331 and 2018-1728) (Nov. 13, 2019). Although many interested stakeholders in the design patent world had hoped for some guidance on the “article of manufacture” issue as it relates to the calculation of a design patent infringer’s total profits, the CAFC did not reach the question of damages. Instead, the CAFC focused on the finding of infringement.

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