Los Angeles Intellectual Property Trademark Attorney Blog

Santa Ana, CA – Kruse Technology has filed a patent infringement suit against Defendants Daimler AG; Mercedes-Benz USA, LLC; Detroit Diesel Corporation; Freightliner Corporation; Western Star Truck Sales, Inc.; Volkswagen AG; Volkswagen Group of America, Inc., Audi of America, Inc.; Ford Motor Company; Cummins Inc.; and Chrysler Group LLC. The Defendants are accused of manufacturing engines that infringe U.S. Patent Nos. 5,265,562, 6,058,904, and 6,405,704. The ‘562, ‘904, and ‘704 patents are all entitled “Internal Combustion Engine With Limited Temperature Cycle”, but have different claims.

The complaint, however, does not appear to provide sufficient information to pass a Rule 12 motion to dismiss. In 2007, the Supreme Court’s Twombly decision stated that under Rule 8(a)(2) a plaintiff’s obligation to provide the grounds for relief “requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007). In 2009, the Supreme Court’s Iqbal decision expanded the application of Twombly to all civil cases. Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009). Thus, a complaint will be dismissed uner Rule 12(b)(6) if it fails to meet the Twombly pleading standard. See e.g. Anticancer, Inc. v. Xenogen Corp., 248 F.R.D. 278 (S.D. Cal. 2007)

The case is Kruse Technology Partnership v. Daimler AG, et al., SACV-10-1066 AG (C.D. Cal. 2010).

Los Angeles, CA – Baby products maker, Munchkin, Inc., wants the Court to rule that its Snack Catcher product does not infringe U.S. Patent No. 6,656,514 (“the ‘514 patent”). It also seeks declaratory judgment of invalidity. The product at issue is a container with several flexible flaps that form the lid and allow a user's hand to be inserted through the flaps to pull out a snack. In the event that the container is tipped over, the flaps prevent the snacks from falling out.

The complaint alleges that Defendant Venita Tubbs has threatened, via her attorney’s cease and desist letter, Munchkin with a patent infringement lawsuit unless it stops selling the Snack Catcher product. Instead of operating under a cloud of uncertainty, Muchkin has taken matters into its own hands and filed suit to adjudicate this dispute. The case is Munchkin, Inc. v. Venita Tubbs, CV10-4074 RSWL (C.D. Cal. 2010).

Los Angeles, CA – Plaintiff Anthony J. Antonious is the inventor of the “Metalwood Type Golf Club Head,” which is the subject of U.S. Design Patent D499,157. Simply put, a design patent covers the ornamental design or aesthetic configuration of a depicted product. Whereas a utility patent covers the way a product works or is manufactured, e.g. a new club head manufactured to have a larger sweet spot. But I digress. In this design patent case, Plaintiff alleges that Tour Edge’s golf club heads, including the Tour Edge V25, Tour 9 Proto, and Tour Edge Bazooka, incorporate the patented design and infringe the ‘157 patent. Plaintiff further alleges inducement of and contributory patent infringement. The case is Trust of Anthony J. Antonious v. Tour Edge Golf Manufacturing, Inc., CV10-02636 RGK (C.D. Cal. 2010).

Hyundai’s website had a “build your own vehicle” (“BYO”) feature and a parts catalogue feature. The BYO feature allowed users to build their own vehicle by responding to choices on a menu, including color, pricing, engine, options, etc. Orion IP, LLC sued Hyundai for infringing a patented method for generating customized product proposals for potential customers of an automobile dealer (U.S. Patent Nos. 5,615,342 and 5,367,627). Hyundai sought a defense under its commercial general liability policies, which was denied. Hyundai lost at trial and the jury awarded $34 million in damages to Orion.

Hyundai then sued its insurers National Union Fire Insurance and American Home Assurance Company in the Central District of California, where it lost on summary judgment because the district court ruled that patent infringement did not constitute “advertising injury” and was not covered under the liability policies. Further, the district court held that Hyundai was “unable to demonstrate a causal connection between its advertising[] and Orion’s alleged injury.”

The California Supreme Court has specified three required elements to establish a duty to defend for an “advertising injury” claim:

[I]n order for [Hyundai] to have a reasonable expectation of coverage under [Defendants’] policy for “advertising injury” [it] must show that: (1) [it] was engaged in “advertising” during the policy period when the alleged “advertising injury” occurred; (2) [Orion’s] allegations created a potential for liability under one of the covered offenses (i.e., misappropriation of advertising ideas); and (3) a causal connection existed between the alleged injury and the “advertising.”

There was no dispute whether the advertising occurred during the policy period. The Court found that Orion had alleged “advertising injury” in that Hyundai’s BYO feature constituted “marketing methods, marketing systems” that fit within the definition of advertising.

The Ninth Circuit then determined that Orion’s patent infringement claim constituted a “misappropriation of advertising ideas.”

Orion patented a method of displaying information to the public at large for the purpose of facilitating sales, i.e., a method of advertising. And Orion’s complaint alleged that Hyundai violated that method patent by using the patented techniques as part of its own “marketing method” or “marketing system.” In other words, Orion patented a “process or invention which could reasonably be considered an ‘advertising idea,’ ” Mez, 90 Cal. Rptr. 2d at 733, and Orion “allege[d] violation of a method patent involving advertising ideas,” Homedics, 315 F.3d at 1141. “In the context of the facts and circumstances of this case,” Mez, 90 Cal. Rptr. 2d at 733, Orion’s patent infringement claim alleged the “misappropriation of advertising ideas.”

With the final “causal connection” factor, there must be a link between the advertisement and the alleged advertising injury. Here, the Court analyzed whether the advertising itself caused the injury – where there is coverage, or the advertising merely displayed an infringing product – where there is no coverage.

Here, the use of the BYO feature in the website is itself an infringement of the patent because it is the use of the BYO feature that violates the patent (and not the design of the car, for instance, or the method of manufacturing the car, or the car’s engine, or anything related to the car for sale). Furthermore, and critically, it is that use that caused the injuries alleged by Orion. See Orion’s complaint (“Hyundai has been and now is directly infringing . . . the ’342 patent . . . by, among other things, methods practiced on its various websites . . . using . . . marketing methods [and] marketing systems . . . covered by one or more claims of the ’342 patent to the injury of Orion.”). Accordingly, there is a direct causal connection between the advertisement (i.e., the use of the BYO feature on the website) and the advertising injury (i.e., the patent infringement). Because the use of the patented method was itself an advertisement that caused the injuries alleged in the third-party complaint, Hyundai has established the requisite causal connection.

Thus, the Court reversed the district court’s grant of summary judgment to the insurers on all claims, and instructed the district court to grant summary judgment to Hyundai on its duty to defend cause of action and to conduct further proceedings on Hyundai’s three other claims. The case is Hyundai Motor America v. National Fire Insurance Company, Case No. 08-56527 (9th Cir. 2010). Copy of the ruling is here.

Santa Ana, CA – BT Beverage Company sued The Coca Cola Company for a declaration of no trademark or design patent infringement. BT sells beverages in bottles that are shaped like sports balls including baseballs, basketballs, soccer balls, and golf balls. BT has filed numerous trademark applications with the USPTO to register its various bottle designs.

During the holidays, Coca Cola sells its beverages in spherical bottles shaped to be Christmas tree ornaments. Coca Cola’s bottle shape, however, was itself the subject of a prior claim of infringement by O-Company and OGO USA. In response, Coca Cola filed an opposition proceeding at the TTAB and also filed a declaratory judgment lawsuit in the Middle District of Tennessee. It appears that the parties resolved the dispute by assigning the disputed application and the resultant trademark registration – which is the subject of the instant lawsuit – to Coca Cola.

BT alleges that in September of 2009, Coca Cola sent a cease and desist letter charging infringement of the trade dress bottle design and Design Patent No. D554,523. BT responded by using Coca Cola’s previous stance against it by denying that Coca Cola had an exclusive right to round shaped bottles for beverage products. The parties’ inability to resolve the dispute resulted in this lawsuit. The case is GT Beverage Company, LLC v. The Coca Cola Company, SACV10-00209 JVS (C.D. Cal. 2010).

San Diego, CA – Trivitis, Inc. sued Ocean Spray for patent infringement alleging that its Cranergy™ drink infringes U.S. Patent No. 6,562,864. Read the complaint here. The ‘864 Patent is entitled “Catechin Multimers as Therapeutic Drug Delivery Agents” and was issued on May 13, 2003. Catechin is an antioxidant or flavonoid and is found in tea leaves. The patent basically covers the treatment of heart and valve disease by administration of these antioxidants, sometimes in combination with other drugs.

The complaint, however, does not appear to provide sufficient information to pass a Rule 12 motion to dismiss. In 2007, the Supreme Court’s Twombly decision stated that under Rule 8(a)(2) a plaintiff’s obligation to provide the grounds for relief “requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007). In 2009, the Supreme Court’s Iqbal decision expanded the application of Twombly to all civil cases. Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009). Thus, a complaint will be dismissed under Rule 12(b)(6) if it fails to meet the Twombly pleading standard. See e.g. Anticancer, Inc. v. Xenogen Corp., 248 F.R.D. 278 (S.D. Cal. 2007)

The case is Trivitis, Inc. v. Ocean Spray Cranberries, Inc., 10CV0316 JM (S.D. Cal. 2009).

Los Angeles, CA – UGG® boot manufacturer, Deckers Outdoor, filed a patent infringement and unfair competition lawsuit against Claire’s Stores and CBI Distributing. UGG® boots have set a fashion trend with young ladies wearing the lamb-skinned boots – to keep their feet and calves warm – with shorts, thereby allowing their knees and thighs to freeze. That’s not in the complaint, it’s just a personal observation. Now back to the regularly scheduled complaint: the UGG® line of boots includes the Classic Cardy™, which was introduced in 2007 and has a crochet upper with buttons on the lateral side. The Classic Cardy™ boot is the subject of U.S. Design Patent No. D582,650 (“the ‘650 Patent”).

Deckers alleges that Defendants sell allegedly infringing boots under the “Claire’s Botts” mark at significantly lower price points, thereby diminishing the market place for the genuine Cardy Boots™. Plaintiff’s Lanham Act claim derives from the alleged sales of infringing boots creating a false association or affiliation with Deckers’ UGG® line of boots.

It’s unclear from the complaint whether Plaintiff is asserting a trade dress infringement claim, but at least they obtained a design patent for the boot – which is not a work protectable by copyright. By doing so, they avoid some costs and expenses in having to conduct surveys to establish trade dress rights and, further, a likelihood of confusion among consumers. The following Federal Circuit opinion provides a great comparison of the level of proof needed for each:

[T]he difference in weight given to empirical evidence is fully understandable in light of the stark differences between the elements required to show design patent infringement and trademark and trade dress infringement. ... [P]urchasers' likelihood of confusion as to the source of a good is a necessary factor for determining trademark and trade dress infringement. ... To show infringement, the holder of a trademark or trade dress therefore must have progressed to the manufacture and distribution of a 'purchasable' product. As a result, consumer behavior in the marketplace is a highly relevant factor in determining trademark and trade dress infringement. Since surveys and other empirical studies are ordinarily probative evidence of consumer behavior in the marketplace, such evidence has significance in determining trademark and trade dress infringement. In contrast, ... a different quantum of proof applies to design patent infringement, which does not concern itself with the broad issue of consumer behavior in the marketplace. ... The single element here required to show design patent infringement involves a much narrower field of inquiry. In short, a design patentee may prove infringement simply by showing that an ordinary observer would be deceived by reason of an accused device's ornamental design. ... Therefore, in showing design patent infringement there is ordinarily no compelling need for empirical evidence. Braun Inc. v. Dynamics Corporation of America, 975 F.2d 815, 828 (Fed. Cir. 1992)

The case is Deckers Outdoor Corp. v. Claire’s Stores, Inc., et al., CV09-09498 CBM (C.D. Cal. 2009).

Since Christmas is a mere four days away, I wanted to discover a “new and useful” method (35 USC § 101) to relay my Christmas greetings in a novel (35 USC § 102) and non-obvious (35 USC § 103) manner. To make sure that my Christmas wishes did not infringe on any other wishes, I decided to conduct a quick patent search. To my chagrin, due to U.S. Patent No. D472,182, I cannot – without infringing – impart my birthday wishes upon Jesus. And my licensing negotiations having fallen through, I figured I would just wish “Merry Christmas To All.” I wanted to make sure, however, that I didn’t infringe on any third-party trademark rights. Quickly running a search on the USPTO database, I thought my Christmas wishes would once again be thwarted by trademark application number 74/455073 for the “Merry Christmas To All” trademark. But my worries quickly dissipated because the application has long been abandoned. Thus, hoping that Santa does not bring me a common-law trademark lawsuit, “Merry Christmas To All and To All A Goodnight.” Note to self: copyright clearance.

During this Thanksgiving week, I would like to thank the readers of my two-cents (if it’s worth that) and intellectual property law for providing interesting – at least to me – topics to blog. How does intellectual property apply to Thanksgiving? Well, the first invention applies to how my turkey will be prepared . . . in a deep fryer of course. It may sound strange and greasy, but deep fried turkeys are moist, crispy, and delicious. U.S. Patent No. 5,896,810 covers the turkey frying apparatus that I’ve come to appreciate. After you’ve tasted a deep-fried turkey, you won’t go back to oven roasted. Also, when you realize you can cook a 14 pound turkey in about 45 minutes, your oven will thank you for going green.

Now, the next invention I will probably pass on. U.S. Patent No. D397,955 relates to a turkey decoration in general. More specifically, the invention allows you to dress up a pumpkin to look like a turkey. It’s a good thing Benjamin Franklin didn’t get his way or the pumpkin turkey may have been the national bird.

Santa Ana, CA – Bird-B-Gone, Inc. (“BBG”) filed a patent infringement lawsuit against Bird Barrier America, Inc. (“BBA”) over the sale of spike strips used to repel birds. BBG is the owner of US Patent No. 7,596,910 entitled “Unitary configured Bird Repellant Apparatus,” which was issued on October 6, 2009, but was filed over ten years ago – a rather long pendency period. The invention generally relates to a unitary piece of injection molded plastic with different sets of sharp spikes having variable heights and an elongated base that is attached to a surface. When mounted to a ledge, for example, the invention prevents birds from landing or perching thereon. The picture to the right, courtesy of Plaintiff's website, illustrates the invention at work. Defendant’s “Polly Spike” product is accused of infringing certain claims of the ‘910 patent. Plaintiff seeks an injunction and monetary damages in an amount to be determined at trial. The case is Bird-B-Gone, Inc. v. Bird Barrier America, Inc. et al., SACV09-01185 DOC (C.D. Cal. 2009).