Articles Posted in Design Patent

Indianapolis, Indiana – Attorneys for Plaintiff, Closure Systems International, Inc. (“CSI”) of Indianapolis, Indiana, filed suit in the Southern District of Indiana seeking a correction in inventorship for two U.S. Design Patents issued to Defendant, Novembal USA Inc. (“Novembal”) of Edison, New Jersey. The patents at issue in this case are United States Patent Nos. D836,442 (the “‘442 Patent”) and Closure-BlogPhoto-300x279D838,171 (the “‘171 Patent”) (collectively the “Patents in Suit”). CSI is seeking preliminary and/or permanent injunctions, attorneys’ fees, costs, and any other relief the Court deems proper.

CSI claims three of its employees, Arnold Benecke, Bill Moll, and John Edie, developed a closure for a bottle (the “Option 2 Closure”) for its customer, Nestle Waters (“Nestle”) on or about January 27, 2011. This invention was allegedly assigned to CSI pursuant to assignments from the three inventors. According to the Complaint, on March 9, 2011, CSI sent a presentation concerning the Option 2 Closure and another option to Nestle that stated that it would have “Prototypes molded by April 1” and “Small quantity of slit samples will be sent by April 13”. CSI claims it emailed Nestle a drawing of the Option 2 Closure on March 10, 2011.

CSI claims Nestle trialed different closures from CSI and at least two other competitors, including Novembal, and CSI delivered 100 samples of the Option 2 Closure to Nestle in or about June 2011. CSI alleges each of the manufacturers at the Nestle trials witnessed each closure and saw all the samples provided to Nestle. After the trials, Nestle awarded the business to Novembal, not CSI.

According to the Complaint, Nestle asked CSI to replace Novembal and inquired as to its ability to supply the Option 2 Closure in early 2018. CSI claims it began supplying a similar closure to the Option 2 Closure to Nestle, but it was slightly different (the “New Closure”). On or about May 24, 2019, CSI claims it was informed by Nestle that the New Closure infringed one or more Novembal patents. Just six days later, Novembal allegedly sent a cease and desist letter to CSI stating that the New Closure infringed the ‘442 Patent.

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This case, originally filed in the United States District Court for the Eastern District of Michigan on claims of patent infringement, was brought on appeal in the United States Court of Appeals for the Federal Circuit. The Court of Appeals issued an opinion affirming the district court’s summary judgment in favor of Defendant-Appellee, Ford Global Technologies, LLC (“Ford”), and against Plaintiff-Appellant, Automotive Body Parts Association (“Automotive”). The originally sealed opinion was issued on July 11, 2019 but was unsealed in full on July 23, 2019.

Ford owns U.S. Patent No. D489,299 (the “D’299 Patent”) and U.S. Patent No. D501,685 (the “D’685 Patent”) for “Exterior of Vehicle Hood”Ford-BlogPhoto-300x138 and “Vehicle Head Lamp”, respectively. These design patents were invented by artists that allegedly selected part designs for the Ford F-150 truck on based on aesthetic appearance alone and not a functional purpose. Automotive is comprised of a group of companies that distribute automotive parts.

Conflict between Automotive and Ford allegedly occurred when Ford accused several Automotive members of infringing the D’299 and D’685 Patents, among others, before the International Trade Commission (“ITC”). The administrative law judge in the ITC proceedings ruled that “‘respondents’ [invalidity] defense that the asserted patents do not comply with the ornamentality requirement of 35 U.S.C. § 171 has no basis in the law’ and that ‘there is no legal basis for respondents’ assertion of [unenforceability based on] either the patent exhaustion or permissible repair doctrines’”. The ITC action settled after the administrative law judge’s ruling.

Indianapolis, Indiana – Attorneys for Plaintiff, Engineered by Schildmeier, LLC of Anderson, Indiana, filed suit in the Southern District of Indiana alleging that Defendants, Amazing Parts Warehouse (d/b/a several different names) of Lexington, Kentucky, and Wuhn Xuelang Auto Parts Co., Ltd. of China, infringed its rights in United States Patent No. D 816,584 (“the ‘584 Patent”) for a “Pair of Bed Rail StakeBlogPhoto-300x225 Pocket Covers”. Plaintiff is seeking judgment including damages, pre and post-judgment interests and costs.

Plaintiff asserts that Defendants have been offering to sell products on Amazon, eBay, and other various sites since February 2018. Amazon has taken down the advertisements when shown the ‘584 Patent. After a bit of time, Amazing Parts Warehouse then re-advertises the same product under a different dba. Amazon removes the new advertisements as they are reported and the cycle repeats almost monthly. The advertisements on eBay have not been removed as eBay refuses to act on validity of patents without Court direction. Plaintiff continues to send Cease and Desist letters to Defendants through Amazon and eBay as well as contact with their websites and the U.S. Postal Service.

Count I of the Complaint asserts federal patent infringement as the Plaintiff’s and Defendants’ bed rail stake pocket covers are as they claim, not only identical, but substantially the same leading to customer confusion. Count II claims trade dress infringement in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The third count seeks declaratory judgment of both the design patent and trade dress validity. Next, Plaintiff seeks declaratory judgment of infringement and validity of trade dress. The final count asserts unfair competition under Indiana state law. Plaintiff claims that they have lost nearly $100,000 in lost profits since the Defendants began selling their counterfeit products in February and they continue to lose a minimum of $3,000 in profits per week.

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Indianapolis, Indiana – Attorneys for Plaintiffs, Taylor Precision Products, Inc. of Oak Brook, Illinois, and The Chef’n Corporation of Seattle, Washington, filed suit in the Southern District of Indiana alleging that Defendants, Double A Concepts, LLC of Mooresville, Indiana, Aaron Farnsworth of Mooresville, Indiana, and Gemini Farnsworth of Mooresville, Indiana, infringed their rights in United States Patent No. 9,718,198 (“the ‘198198Patent-300x244 Patent”) for “Stripping Tool for Leafy Vegetables and Herbs” and United States Patent No. D776,991 (“the ‘991 Patent”) for “Stripping Tool for Leafy Vegetable and Herbs”. Plaintiffs are seeking permanent and preliminary injunctions, compensatory damages, treble damages, pre-judgment interest, costs, and attorney fees.

Plaintiff Chef’n owns the ‘198 Patent, which issued on August 1, 2017 from an application claiming the benefit to the provisional application that was filed on September 8, 2014. Plaintiff Taylor owns the ‘991 Patent, which issued on January 24, 2017 from an application filed on September 8, 2014. The Defendants own and operate a store, “Friendly Cooking,” which sells kitchen products through their website, www.friendlycooking.com.

Together, Plaintiffs allege that the Defendants offer for sale and have sold a 3 Piece Clip on Strainer Set, which includes an infringing herb stripping tool. The herb stripping tool is alleged to include each and every limitation recited in at least independent claim 1 and dependent claims 2-5 of the ‘198 Patent. Even if the herb stripping tool does not contain each and every feature literally, the Plaintiffs claim that it is still infringing under the Doctrine of Equivalents. Further, Plaintiffs assert that the herb stripping tool is substantially the same design as the ‘991 Patent, therefore infringing the ‘991 Patent.

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Indianapolis, Indiana – Attorneys for Plaintiff, Klipsch Group, Inc. of Indianapolis, Indiana filed suit in the Southern District of Indiana alleging that Defendant, Shenzhen Paiaudio Electronics Co., Ltd of Guangdong, 2017-11-08-BlogPhoto-224x300China infringed on the U.S. Patent No. D603,844 (the ‘844 patent), titled “Headphone,” and violated Klipsch headphones’ trade dress. Plaintiff is seeking judgment, a permanent injunction, lost profits, damages, pre-judgement and post-judgment interest, attorneys’ fees, and all relief just and proper.

Plaintiff Klipsch is an Indianapolis-based audio company that produces headphones, earphones, and speakers for home and commercial use. China-based Defendant Paiaudio specializes in producing high-end earphones. The subject of this litigation is a type of small earphone patented by Klipsch, specifically their “X12i” model. Plaintiff alleges that Defendant’s “π 3.14 Audio” model is virtually identical to the X12i, infringes on the patent, and violates the Lanham Act via trade dress confusion.

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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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