Articles Posted in Patent Litigation

patent-attorney-liability-insurance-coverage-patent-infringement.jpgHyundai’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:

patent-attorney-design-trademark-bottle-gt-beverages-coca-cola.jpgSanta Ana, CA – GT 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).

patent-attorney-cranergy-twombly-iqbal.pngSan 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).

boot-design-patent-attorney-cardy-ugg-shoe.jpgLos 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:

christmas-patent-design-patent-christmas-ornament.jpgSince 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.

patent-attorney-deep-fryer-turkey-patent-1109.jpgDuring 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.

patent-attorney-bird-repellent-spikes-patent-infringement.jpgSanta 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).

Los Angeles, CA – Mobile Hi-Tech Wheels, Inc. (“MHT”) has been manufacturing custom wheels for automobiles since 1986, which wheels are sold to automobile dealers and after-market parts retailers. MHT was issued U.S. Patent No. D578,459 for its “Illusion” wheel design and U.S. Patent No. D585,808 for its “Bomber” wheel design. Defendant MKW Alloy, Inc. is accused of selling, without authorization, two wheel designs that allegedly infringe MHT’s patents. The case is Mobile Hi-Tech Wheels, Inc. v. MKW Alloy, Inc., CV 09-5695 VBF (C.D. Cal. 2009).


patent-attorney-headrest-monitor-tmi.jpgRiverside, CA – TMI Products, Inc. is the exclusive licensee of U.S. Patent Number 7,040,697 (“the ‘697 patent”) and U.S. Patent Number 7,407,227 (“the ‘227 patent”) both entitled “Headrest Having an Integrated Video Screen.” The ‘227 patent is a continuation of the ‘697 patent, having the same specification but with varying claim scope. The patents generally relate to video display units that are pivotally mounted within the back of a headrest such that the plane of the video monitor can be pivoted about both a horizontal and vertical axis.

TMI accuses Rosen’s “Dual DVD Headrest Replacement Systems” sold as the AV7000 and AV75000 models of infringing both patents. TMI alleges that Rosen’s infringement is willful and intentional and demands treble damages and attorneys’ fees under 35 U.S.C. § 285. The case is TMI Products, Inc. v. Rosen Entertainment Systems, L.P., EDCV 09-01300 SGL (C.D. Cal. 2009).

los-angeles-patent-attorney-pwp-inline-plastics-product.jpgLos Angeles, CA – PWP Industries filed a complaint for declaratory judgment that its food storage containers do not infringe Inline Plastic’s U.S. Patent No. 7,118,003 (“the ‘003 Patent”). PWP manufactures tamper-resistant plastic packaging for a variety of foods, from vegetables to bakery goods. The ‘003 Patent relates to a plastic container having a hinged cover that engages the base container. The tamper-resistant indicator is a strip that spans from the cover to the base; thereby, preventing access to the interior of the container without breaking the strip. After being accused of infringement, PWP filed the instant action because “an actual controversy existed between [Inline] and [PWP] concerning the alleged infringement of the ‘003 patent. See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (rejecting the “reasonable apprehension of suit” test). The case is PWP Industries v. Inline Plastics Corp., CV09-4417 ODW (C.D. Cal. 2009).