Design Patent

October 20, 2023

Multiple Patents Allegedly Infringed Upon In Suit between Rogue Fitness and Bells of Steel USA, Inc.

Columbus, Ohio – Plaintiff Coulter Ventures, LLC, d/b/a Rogue Fitness (“Rogue”) filed suit against Bells of Steel USA Inc., for alleged patent infringement of its fitness products in Bell’s sporting goods stores, including their Indianapolis, Indiana, Bells of Steel USA Showroom.

According to the complaint, Rogue Fitness owns several design and utility patents for fitness equipment, including Patent No. 11,173,337: “Weightlifting Assembly and Weight Rack Including Weightlifting Assembly”, Patent No. 10,226,661: “Weightlifting Rack Assembly and Wall Mount Bracket for a Weightlifting Rack Assembly,” Patent No. D992,063: “Wall Mounted Exercise Rack,” Patent No. D961,020: “Weight Plate,” and Patent No. RE49,513: “Barbell.” Rogue states that all these patented products are listed on the company’s website for the public to view at any time.

In the suit, the Plaintiff alleges that the Defendant has been purposely advertising, marketing, selling, manufacturing, and distributing products that are infringing on Rogue’s lawfully held patents. Rogue specifically identified 8 of the products Bells advertises as infringing upon the Plaintiff’s patents in their design and/or utility. The Plaintiffs claim that the Defendant relies on “making cheap copies of products and designs created by others and only later dealing with patent infringement.”

August 9, 2022

PUMA Sues Competitor for Alleged Trademark and Patent Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Plaintiffs, PUMA SE and PUMA North America Inc. (“PUMA”), are world leaders in the sportswear industry. PUMA SE, based in Herzogenaurach, Germany, is a multi-national company that designs and manufactures athletic and casual footwear, apparel, and accessories. PUMA North America Inc. is a Delaware Corporation, with its principal place of business in Somerville, Massachusetts and is one of the top five sportswear brands in the world by revenue.

PUMA applied for a Federal Trademark registration under Application Serial No. 97171928 for the mark NITRO for footwear, namely, running shoes, training shoes, and basketball shoes. According to the Complaint, in or around December 2021, PUMA requested the Defendant, Brooks Sports, Inc. (“Brooks”) cease and desist the use of the Mark NITRO mark in connection with footwear. The parties were unable to reach a settlement.

PUMA also alleges that the Brooks shoe the “Aurora BL” infringes upon their Design Patent No. D897,075 and is being sold in connection with the infringing use of PUMA’s NITRO mark.

August 13, 2021

Michigan City Resident Sues Numerous Retailers for Alleged Patent Infringement

By Overhauser Law Offices, LLC

Hammond, Indiana – Apparently, James E. Cross, the Plaintiff is the owner of three design patents for convertible t-shirt designs, U.S. Patent Nos. D/580,633, D/581,136, and D/341,471 (collectively, the “Patents in Suit”). Notably, it appears the ‘633 and ‘136 Patents are set to expire in November 2022, while the ‘471 Patent expired in November 2007 since the term for a design patent filed prior to May 13, 2015 is 14 years.

Cross claims Defendants, Dick’s Sporting Goods Inc., Walmart Inc., Kohl’s Inc., and Amazon, Inc. (collectively “Defendants”), have actively induced and contributorily infringed upon the Patents in Suit and his trade dress by importing, offering for sale, and/or selling t-shirts with his ornamental designs without his permission.

While the pro se Complaint is fairly short, Cross attached numerous exhibits not discussed in the Complaint including an order dismissing Cross’ case against Meijer, Inc. due to settlement and a Patent Trial and Appeal Board decision regarding the ‘471 Patent. Further attached are black and white photos of zip-up bike jerseys allegedly being sold by Defendants.

Cross is seeking an accounting of damages, costs, expenses, and reasonable attorney’s fees pursuant to 35 U.S.C. § 285.

Practice Tip: The current design patent term, if filed on or after May 13, 2015 is 15 years from the date of grant. 35 U.S.C. § 173.

May 7, 2020

Williamsburg Furniture Claims Lippert Patent is Invalid and/or Unenforceable

By Overhauser Law Offices, LLC

South Bend, Indiana – Attorneys for Plaintiff, Williamsburg Furniture, Inc. (“Williamsburg”) of Nappanee, Indiana originally filed suit in the District Court of Delaware seeking a declaratory judgment of non-infringement against Defendant, Lippert Components, Inc. (“Lippert”) claiming Lippert’s United States Patent No. 8,739,330 (the “‘330 Patent”) is invalid and/or unenforceable. Williamsburg is also seeking judgment for false advertising and unfair competition as it claims Lippert informed Williamsburg’s customers of the alleged patent infringement and caused Williamsburg to lose sales. Upon motion by Lippert, the case was transferred to the Northern District of Indiana.

According to the Complaint, the invention claimed in the ‘330 Patent for a tri-fold sofa was publicly disclosed, in public use, on sale, or otherwise available to the public through third parties not associated with the ‘330 invention more than one year prior to the filing of the provisional patent application. For instance, Patrick Hutmacher claims he purchased a tri-fold chair/bed in August 2010 from a furniture store in McHenry. One month later, a person from the McHenry furniture store allegedly brought a second tri-fold chair/bed to Mr. Hutmacher at his place of employment, Flair Interiors, Inc. (“Flair”), in an attempt to supply the products to the company.

March 26, 2020

Motion to Disqualify: Patent Law Firm Tries to Cap Bottle Cap Suit

By Overhauser Law Offices, LLC

This suit is over the design of two bottle caps.

Plaintiff, Closure, claims it designed the bottle cap on the left, and Defendant, Novembal, got a patent on the bottle cap on the right. But Closure claims that it, not Novembal is the actual “inventor” of the bottle cap design. Perhaps fearing that Novembal was about to file suit, Closure in its home turf of New Jersey and trying to gain a home court advantage, took the initiative and sued Novembal in Indiana. Its Complaint sought to “correct the inventorship” of Novembal’s patent and to prevent Novembal from enforcing the patent against Closure. That suit is reported here: Closure Systems International Sues Novembal USA Seeking Correction of Inventorship. Not surpisingly, Novembal asserted a counterclaim for patent infringement.

The twist is that in the infringement counterclaim, Novembal seeks a broad injunction. So broad, that it would prevent not just Closure, but some of Closure’s customers from infringing the patent. In its counterclaim, Novembal seeks:

A permanent injunction enjoining CSI and its employees, agents, successors, partners, officers, directors, owners, shareholders, principals, subsidiaries, related companies, affiliates, distributors, dealers, and all persons in active concert or participation with any of them . . . from making, importing, promoting, offering, or exposing for sale, or selling the CSI Production Closures, or any other closures with designs confusingly similar to the claimed design of Novembal’s ‘442 patent.

One company that apparently gets its bottle caps from Closure is Nestle, one of the biggest sellers of bottled water. So far, no big deal. Except, Nestle is represented by the blue chip Washington DC patent law firm, Finnegan, Henderson, Farabow, Garrett & Dunner. Finnegan happens to be the same law firm that represents Novembal in the suit with Closure. So Finnegan is attempting to get an injunction for one client (Novembal) that would apply to another client, Nestle. Continue reading

February 19, 2020

Urschel Laboratories, Inc. of Chesterton, Indiana Sued for Alleged Patent Infringement

By Overhauser Law Offices, LLC

Hammond, Indiana – Attorneys for Plaintiff, FAM N.V. (“FAM”) of Belgium, filed suit in the Northern District of Indiana alleging that Defendant, Urschel Laboratories, Inc. (“Urschel”) of Chesterton, Indiana, infringed its rights in United States Patent No. D730,703 (the “D‘703 Patent”) entitled “Knife Holder”. FAM is seeking judgment, consequential and compensatory damages, attorneys’ fees and costs, pre-judgment and post-judgment interest, and any other relief the Court deems proper.

FAM claims to be a world leader in designing, developing, and manufacturing of cutting solutions for the food industry. According to the Complaint, the D’703 Patent was issued to Brent L. Bucks on June 2, 2015 and was later assigned to FAM. FAM alleges the “25883 Urschel® USA” product is an example of a knife holder that has infringed the D’703 Patent. Further, FAM claims Urschel’s alleged infringement of the D’703 Patent is “willful, deliberate, and objectively reckless.” As such, FAM is seeking damages pursuant to 35 U.S.C. § 284 or 35 U.S.C. § 289, and is requesting the case be considered “exceptional” under 35 U.S.C. § 285.

February 13, 2020

Federal Circuit finds in favor of Seirus Innovative over Columbia Sportswear

By Overhauser Law Offices, LLC

The United States Court of Appeals for the Federal Circuit issued an opinion as to Summary Judgment in the case of Columbia Sportswear North America, Inc. (“Columbia”), an Oregon Corporation, versus Seirus Innovative Accessories, Inc. (“Seirus”), a Utah Corporation. This appeal by Columbia came after a jury trial in the U.S. District Court for the Southern District of California found that claims 2 and 23 of U.S. Patent 8,453,270 (the “’270 Patent”) are invalid as anticipated and obvious. Seirus cross-appealed from the U.S. District Court for the District of Oregon’s grant of summary judgment that it infringes U.S. Patent D657,093 (the “’093 Patent”) and from the entry of the jury’s damages award. The Court of Appeals found claims 2 and 23 of the ‘270 Patent are invalid and that the Court for the District of Oregon erred in granting summary judgment for infringement of the ‘093 Patent.

Columbia originally filed suit in the District of Oregon on January 12, 2015 claiming that Seirus infringed both the ‘270 and ‘093 Patents. Seirus moved to transfer the case to the Southern District of California, but that motion was denied. The district court then “granted summary judgment that Seirus’s HeatWave products infringe the ‘093 patent” stating that “the difference in wave pattern, orientation, and the presence of Seirus’s logo” were characterized as “minor differences.” Seirus moved to transfer the case to the Southern District of California for a second time, two years after its first motion, in light of the decision in TC Heartland LLC v. Kraft Foods Grp. Brans LLC, 137 S. Ct. 1514 (2017). Due to the intervening case law, the District of Oregon transferred the remainder of the claims to the Southern District of California.

A jury trial was held in the Southern District of California and claims 2 and 3 of the ‘270 Patent were found to be invalid as anticipated and obvious. The jury also awarded Columbia $3,018,174 in damages for non-willful infringement of the ‘093 Patent. Both Parties “filed post-trial motions for judgment as a matter of law and for a new trial, but the court summarily denied them in a two-page opinion.” Subsequently, the Parties each filed notices of appeal.

The court’s denial of the motions for judgment as a matter of law is reviewed by the substantial evidence standard. “A jury’s verdict must be upheld if supported by substantial evidence.” OTR Wheel Eng’g, Inc. v. W. Worldwide Servs. Inc., 897 F.3d 1008, 1015 (9th Cir. 2018) (citing Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 984 (9th Cir. 2017). The court’s denial of a motion for a new trial is reviewed for an abuse of discretion. Molski v. M.J. Cable, Inc., 481 F.3d 724, 728 (9th Cir. 2007). The granting of a new trial may only be done “if the verdict is contrary to the clear weight of the evidence, is based upon false or perjurious evidence, or to prevent a miscarriage of justice.” Passantino v. Johnson & Johnson Consumer Prods., Inc., 212 F.3d 493, 510 n.15 (9th Cir. 2000). Continue reading

October 10, 2019

Closure Systems International Sues Novembal USA Seeking Correction of Inventorship

By Overhauser Law Offices, LLC

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 D838,171 (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.

August 22, 2019

Design Patents Protect Spare Parts For Vehicles

By Overhauser Law Offices, LLC

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” 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.

December 17, 2018

Indiana Patent Litigation: Indiana Based Company, Engineered by Schildmeier, Seeks Declaratory Judgment of Patent and Trade Dress Infringement

By Overhauser Law Offices, LLC

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 Stake 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.