Articles Posted in Design Patent

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Bloomington, Indiana – In a highly publicized intellectual property case involving the design features of smartphones and tablets, the Federal Circuit will decide whether to force Samsung to pay Apple nearly $400 million – Samsung’s total profits on products that infringed Apple’s design patents. Though several high-profile academics have lined up in support of Samsung, Apple’s position on the total profits rule should prevail, according to Indiana University Maurer School of Law experts who have filed an amicus curiae brief in the case.

Apple and Samsung have been battling in dozens of complex intellectual property infringement cases in several countries. At trial in one of the U.S. cases, a jury found that several Samsung devices infringed Apple’s design patents, and awarded Apple all of Samsung’s profits on those devices. On appeal, Samsung is arguing that it should only be required to give up the portion of its profits that can be linked directly to the infringing design features of the products, a theory called “apportionment.”

“Congress debated this same question over a century ago and rejected apportionment,” said Mark D. Janis, the Robert A. Lucas Chair of Law and director of the Center for Intellectual Property Research at the IU Maurer School of Law. He explained that in the mid-1880s, the Supreme Court decided two cases involving carpet designs in which the infringers made thousands of dollars in profits, but the design patent holder was awarded only 6 cents because it failed to prove how much of the profit was attributable to the carpets’ appearance.

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Indianapolis, Indiana – Indiana patent attorneys for Kimball International, Inc. of Jasper, Indiana commenced intellectual property litigation in the Southern District of Indiana alleging that NWN, Inc., d/b/a Westin-Nielsen, infringed Design Patent Nos. D654,718 for a “Side Chair” and D665,188, also for a “Side Chair.” These design patents have been issued by the U.S. Patent Office.

Kimball, a furniture design and manufacturing company that has operated for over four decades, asserts that Westin-Nielsen’s “Cascade” line of chairs infringes Kimball’s intellectual property rights in two design patents. The Cascade line of chairs, named after the Cascade River in northern Minnesota, is designed for plus-sized seating.

At issue in this design patent litigation are United States Design Patent Nos. D654,718 (the “‘718 Patent”) and D665,188 (the “‘188 Patent”). Westin-Nielsen is accused of infringing these patented designs, either directly or contributorily, by making, using, selling, offering for sale, or supplying products such as Westin-Nielsen’s Cascade line of chairs. Kimball asserts that Westin-Nielsen will continue to do so unless enjoined.

The complaint, filed by Indiana patent lawyers for Kimball, lists the following counts:

• Infringement of United States Design Patent No. D654,718

• Infringement of United States Design Patent No. D665,188

Kimball asks that the court:

• Adjudge that NWN has infringed the ‘718 and ‘188 Patents in violation of 35 U.S.C. § 271;

• Issue preliminary and permanent injunctive relief prohibiting NWN and its agents from infringing the ‘718 and ‘188 Patents pursuant to 35 U.S.C. § 283;

• Award Kimball damages for patent infringement, and prejudgment interest and costs against NWN pursuant to 35 U.S.C. § 284;

• Adjudge that NWN’s infringement of the ‘718 and ‘188 Patents has been deliberate, willful, and wanton;

• Adjudge that NWN’s infringement of the ‘718 and ‘188 Patents has been exceptional under 35 U.S.C. § 285;

• Treble the damage award under 35 U.S.C. § 284;

• Award Kimball its reasonable attorneys’ fees under 35 U.S.C. § 285; and

• Award Kimball the total profits received or derived by NWN from the manufacture, marketing, sale, offering for sale, and/or distribution of products bearing or using any copy or colorable imitation of the ‘718 and ‘188 Patents pursuant to 35 U.S.C. § 289.

Practice Tip: The U.S. Supreme Court ruled this year that a trial court may award attorneys’ fees in case of patent infringement litigation that it deems “exceptional.” These Supreme Court rulings revisiting how “exceptional” is defined may benefit any company which is the target of a questionable patent infringement lawsuit, as trial judges will now have greater latitude to award attorneys’ fees in those cases in which they determine that the conduct of the losing party “stands out from others.”

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South Bend, Indiana – NIBCO, Inc. of Elkhart, Indiana has sued Valvulas Arco, S.A. (“Arco”) of Valencia, Spain in the Northern District of Indiana asking for a declaratory judgment that it has not violated Arco’s patents, U.S. Design Patent Nos. 429,518; 429,519; 429,520; 438,595; and 479,307.

NIBCO-logo.jpgArco and NIBCO both manufacture shut-off valves.  From about 2002 to 2008, Arco manufactured and sold to NIBCO shut-off valves of the type involved in this dispute.  Around 2008, NIBCO discontinued purchasing valves from Arco.  Currently, NIBCO manufactures shut-off valves for its own use and for sale.

In letters dated April 22, 2013 and August 16, 2013, Arco purportedly asserted that NIBCO infringes the Arco valves (the “patents-in-suit”).  As a result of Arco’s claims of infringement in those letters, NIBCO asserts that there is now an actual controversy between it and Arco regarding the alleged infringement and validity of the patents-in-suit; NIBCO seeks a resolution under the Declaratory Judgment Act.

NIBCO states that Arco has never fixed upon its shut-off valves notice of, nor was there ever any mention of any of, any of the patents-in-suit.  It further claims that most, if not all, of the features shown in the claims are functional.  To the extent that any purely ornamental features do exist, it contends that those ornamental features of NIBCO’s products would not appear substantially similar to an ordinary observer.  Consequently, NIBCO asserts that its products do not infringe, either literally or under the doctrine of equivalents.  Finally, NIBCO denies inducing others to infringe any of the patents-in-suit.

NIBCO asks that this be found to be an exceptional case and asks that attorney’s fees be awarded pursuant to such a finding.  In its complaint, patent attorneys for NIBCO ask the court for:

  • Count I: Declaratory Judgment of Non-Infringement
  • Count II: Declaratory Judgment of Invalidity of the Patents-In-Suit

Practice Tip: In MedImmune v. Genentech, 549 U.S. 118 (2007), the U.S. Supreme Court revised the Federal Circuit’s test for ripeness under the Declaratory Judgment Act, which had required a reasonable apprehension of suit in order to establish jurisdiction.  The Court broadened the scope of declaratory judgment jurisdiction, holding that the totality of the circumstances should be evaluated in determining the existence of “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant relief.” 

In this case, it is unclear whether the complaint adequately alleges, under the totality of the circumstances, a controversy of sufficient immediacy to warrant jurisdiction under the Declaratory Judgment Act. 

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Indianapolis, Ind. – Patent attorneys for Novelty, Inc. of Greenfield, Ind. NoveltyIncLogo.JPGfiled a declaratory judgment suit against Margaret Rothschild of Sherman Oaks, Calif. seeking a judgment that Novelty’s “Mohawk Monkey” does not infringe Rothschild’s Design Patent No. D501,897 (the “‘897 Patent”) which has been issued by the U.S. Patent Office.

Novelty specializes in the distribution and sale of toys and novelty items.  One of its products is a plush toy sold under the name “Mohawk Monkey.”  Rothschild, via a patent attorney, contacted Novelty in March 2013 and asserted that the Mohawk Monkey infringed her patent.  She insisted that Novelty cease all sales of its Mohawk Monkey and demanded payment for damages caused by the alleged infringement.  Rothschild indicated that a refusal to comply would be met with vigorous litigation.

In its declaratory judgment action, filed in the Southern District of Indiana, Novelty asserts that its Mohawk Monkey is significantly different from the design claimed in Rothschild’s ‘897 Patent and that an ordinary observer would not be deceived.  Novelty asks for a declaration that its Mohawk Monkey does not infringe the ‘897 Patent, a declaration that the Patent is unenforceable and/or invalid, a finding that the case is exceptional and, pursuant to that finding, an award to Novelty of its reasonable attorneys’ fees.

Practice Tip: Design-patent litigation seems to be increasingly “fashionable.”  The expected players, such as technology innovators, are seeking protection for their goods under design-patent protection as they traditionally have.  (See, e.g., Apple Inc. v. Samsung Electronics Co., Ltd.)  However, other less-traditional users of design patents are also beginning to see the value of a design patent in protecting their intellectual property.  For example, the fashion industry has historically found little use for design patents, as the time needed to obtain such a patent usually exceeds the relatively short lifespan of various fashions, which typically change season to season.  However, that is changing.  (See, for example, the dispute between Spanx and Yummie Tummie.)  In addition, as a result of the recent America Invents Act, individuals with grievances are no longer limited to filing suit; they can now also ask the Patent Office whether patents in dispute are valid.  The central provisions of the Act went into effect on March 16, 2013.

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Indianapolis, IN – Patent attorneys for Syndicate Sales, Inc. of Kokomo, Indiana filed a patent infringement suit in the Southern District of Indiana alleging Hill’s Import, Inc. of Quakertown, Pennsylvania infringed design patent no. D652,342, Plateau vase with constant size neck, known as the “Harshman patent, “which has been issued by the US Patent Office.

The complaint states that the patented vase design was created by artist Trent Harshman, who has assigned all his rights to Syndicate. Syndicate’s complaint states that Hill’s has never beenVase.jpg granted any rights to sell or import the patented vase design. The complaint alleges that Hill’s infringed the patent by importing and selling vases that utilized the patented design. Syndicate’s patent attorneys have alleged that the vases in question were manufactured in by Shangdong Yiyaun Oking Glassware Company in China. Syndicate is seeking a declaration of infringement, an injunction, damages, attorney fees and costs.

Practice Tip: Syndicate Sales’ patent purports to cover a vase having a square bottom that morphs into a rounded top with a flange. This would seem to be a common shape, and, if Hill’s import does not get the case dismissed on jurisdictional ground, it can be expected to attack the validity of the patent on grounds of “obviousness.” Also, the complaint alleges that the vases Hill’s allegedly sold came from a factory in China and include Syndicate’s UPC code. This raises an issue of whether the Chinese factory had been authorized by Syndicate to make the vases. If so, Hills may have license defense. Alternatively, Hill’s may be entitled to be indemnified by its alleged Chinese supplier.
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Indianapolis, IN – Brandon S. Judkins of Indianapolis, Indiana filed a patent infringement suit alleging Polo Ralph Lauren Corporation of New York, New York infringed Patent No. D591,090, FURNITURE ARTICLE, which has been issued by the US Patent Office. The patent in question is a design patent of a table.

The complaint alleges that Polo Ralph Lauren is importing, making, using, selling or offering for sale tables that infringe Mr. Judkin’s patent. Specifically, Mr. Judkins alleges that he has seen infringing tables at Macey’s and Carson Pirie Scott locations in Indianapolis. The complaint states that Polo Ralph Lauren is using the tables to display apparel at the stores. Mr. Judkins, an attorney, is representing himself in this case. Mr. Judkins seeks an injunction, declaratory judgment, damages, and costs.

This case has been assigned to Chief Judge Richard L. Young and Magistrate Judge Debra McVicker Lynch in the Southern District of Indiana, and assigned Case No. 1:11-cv-00661-RLY-DML.

Practice Tip: In 2008, the Federal Circuit clarified the test for infringement of design patents in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008). In that case, the court adopted the “ordinary observer” test to replace the “point of novelty” test. In the complaint here, the patented design appears to be pretty basic. The plaintiff may face an uphill battle.
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