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Two Prong Protection is the Best Approach for Product Configuration

It has long been possible to use both trade dress and design patent rights to protect three-dimensional designs that function as trademarks. One strategy has been to rely on design patent protection while a three-dimensional...more

MarkIt to MarketTM - July 2015

The July issue of Sterne Kessler's MarkIt to MarketTM newsletter explains why two pronged protection is the best approach for product configuration, discusses the importance of coordination between legal and marketing...more

Design Patent Case Digest: Simmons Bedding Company v. Sealy Technology LLC

Decision Date: March 31, 2015 - Court: U.S. Patent Trial and Appeal Board - Patents: D622,531 - Holding: Examiner’s decision in reexamination proceeding not to adopt Requester’s obviousness rejections REVERSED...more

Design Patent Case Digest: Apple Inc. v. Samsung Electronics Co., Ltd.

Decision Date: May 18, 2015 - Court: U.S. Court of Appeals for the Federal Circuit - Patents: D593,087; D604,305; D618,677 - Holding: Judgment of trade dress dilution REVERSED; judgment of patent validity and...more

Design Patent Case Digest: Kreative Power, LLC v. Monoprice, Inc.

Decision Date: March 3, 2015 - Court: Northern District of California - Patents: D653,215 - Holding: Defendant’s motion for summary judgment GRANTED - Opinion: On June 26, 2014, Kreative Power, LLC...more

Design Patent Case Digest: Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, LTD.

Decision Date: April 21, 2014 and April 14, 2015 - Court: Patent Trial and Appeal Board and U.S. Court of Appeals for the Federal Circuit - Patents: D617,465 - Holding: Claimed design is obvious and therefore...more

Design Patent Case Digest: Anderson v. Kimberly-Clark Corporation

Decision Dates: September 25, 2013 and July 10, 2014 - Court: W.D. Washington and Federal Circuit - Patent: D401,328 - Holding: Defendant’s Motion for Judgment on the Pleadings GRANTED; Complaint...more

Design Patent Case Digest: Robinson v. JoeyBra LLC

Decision Date: May 8, 2013 and June 3, 2014 Court: W.D. Virginia - Patent: D448,541 - Holding: Plaintiff’s motion for reconsideration of order denying preliminary injunction - DENIED. Defendant’s motion for...more

Design Patent Case Digest: Young v. Stone

Decision Date: August 28, 2014 - Court: N.D. Illinois - Patent: D442,661 - Holding: Defendant’s motion for judgment on the pleadings of non-infringement - GRANTED Opinion: Plaintiff...more

Design Patent Case Digest: Reddy v. Lowe’s Companies, Inc.

Decision Date: November 18, 2014 - Court: District of Massachusetts - Patent: D677,423 - Holding: Plaintiff’s proposed claim construction ADOPTED - Opinion: Plaintiff Maureen Reddy sued...more

Design Patent Case Digest: High Point Design LLC and Meijer, Inc., Sears Holding Corp. and Wal-Mart Stores, Inc. v. Buyers Direct,...

Decision Dates: September 11, 2013 and March 26, 2014 - Courts: Federal Circuit and the Southern District of New York Patent: D598,183 - Holding: Grant of summary judgment of invalidity REVERSED and REMANDED; on...more

Design Patent Case Digest: Wallace v. Ideavillage Products Corp.

Decision Date: September 15, 2014 - Court: District of New Jersey - Patents: D485,990 - Holding: Defendant’s motion for summary judgment: GRANTED - Opinion: Allyson Wallace, initially acting pro se,...more

Markit to Market - October 2014

The October issue of Sterne Kessler's MarkIt to MarketTM newsletter reviews some highlights from the new USPTO Service Mark Specimens Examination Guide, considers the colorful history of the Störtebeker beer brand name, and...more

11/10/2014  /  Brand , gTLD , Internet , Patents , USPTO

Design Patent Case Digest: Weber-Stephen Products LLC v. Sears Holding Corporation

Decision Date: October 20, 2014 - Court: Northern District of Illinois - Patents: D564,834 and D609,045 - Holding: Defendants’ proposed claim construction is REJECTED - Opinion: Plaintiff...more

Design Patent Case Digest: Butler v. Balkamp Inc.

Decision Date: September 3, 2014 - Court: Southern District of Indiana - Patents: D500,646 - Holding: Defendants’ motion for summary judgment of non-infringement GRANTED - Opinion: Plaintiff Kenneth...more

Design Patent Case Digest: Medtronic, Inc. v. NuVasive, Inc.

Decision Date: March 21, 2014 - Court: Patent Trial and Appeal Board - Patents: D652,922 - Holding: Petition to Institute Inter Partes Review DENIED - Opinion: Medtronic, Inc. filed a petition...more

Design Patent Case Digest - P.S. Products, Inc., v. Activision Blizzard, Inc.

Decision Date: February 21, 2014 - Court: E.D. Arkansas - Patents: D561,294 and D576,246 - Holding: Defendants’ motion to dismiss GRANTED - Opinion: Plaintiffs P.S. Products, Inc. (“P.S.”)...more

Design Patent Case Digest: Dorman Products, Inc. v. PACCAR, Inc.

Decision Date: September 5, 2014 - Court: Patent Trial and Appeal Board - Patents: D525,731 and D526,429 - Holding: Petitions to Institute Inter Partes Review DENIED Opinion: Dorman...more

China Grants First Patents to Graphical User Interface Designs

The State Intellectual Property Office (SIPO) of China has issued the first four design patents protecting graphical user interfaces (GUIs). The patents issued were filed by Beijing Qiyi Century Science & Technology Co.,LTD.,...more

Design Patent Case Digest: Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, LTD.

Decision Date: April 21, 2014 - Court: Patent Trial and Appeal Board - Patents: D617,465 - Holding: Claimed design is obvious and therefore UNPATENTABLE - Opinion: Petitioners Munchkin, Inc. and Toys...more

Design Patent Case Digest: Z Produx, Inc. v. Make-Up Art Cosmetics, Inc.

Decision Date: November 5, 2013 - Court: Central District of California Patents: D642, 743 - Holding: Make-Up Art Cosmetics’ motion for summary judgment of non-infringement is GRANTED...more

Design Patent Case Digest: MRC Innovations, Inc. v. Hunter Mfg., LLP

Decision Date: April 2, 2014 - Court: U.S. Court of Appeals for the Federal Circuit - Patents: D634,488 and D634,487 - Holding: N.D. of Ohio’s Grant of Summary Judgment of Invalidity AFFIRMED...more

PTAB Invalidates Patent in First IPR Trial of a Design Patent

On April 21, 2014, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office issued a final written decision in the first inter partes review proceeding involving a design patent (IPR2013-00072). In...more

Design Patent Case Digest: ATAS International, Inc. v. Centria

Decision Date: September 24, 2013 - Court: Patent Trial and Appeal Board - Patents: D527,834 - Holding: ATAS’s petition to institute inter partes review is DENIED. Opinion: ATAS International, Inc....more

Design Patent Case Digest: W.Y. Industries, Inc. v. Kari-Out Club LLC

Decision Dates: August 25, 2011 and November 12, 2013 - Courts: D. NJ and United States Court of Appeals for the Federal Circuit - Patents: D469,689 - Holding: The terms of the ‘689 Patent are construed;...more

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