New Feature: REGULARLY UPDATED LIST OF RECENT U.S. DESIGN PATENT LAW CASES

This feature provides access to the most recent U. S. design patent law cases.  A list of the cases is provided with instructions on how to find the cases on the Internet.  The product and main issues in the cases are identified.

Data format explained:
Date of the decision
Name of case
legal citation in the U. S. Patent Quarterly (BNA)
Court making the decision
Product related to the design
The main issues in the case

How to locate a decision on the Internet: Steps are
1.  Go to the web site: http://www.findlaw.com
2.  Click on U. S. law:  cases and codes
3.  Enter in the search block a few unique words from the case name, using the Findlaw database.
4.  If there are several items found in the search, look at each items to see which one has the decision date, involves a design patent, the product identified and issues listed.
 

Alternative method of locating a decision: Steps are
1.  Go to the Federal Courts Finder database at Emory University School of Law, at http://www.law.emory.edu for the judicial region that applies to the listed case, or click on a geographic  region and a list of states will appear.  The Federal Circuit Court of Appeals has a separate button on the right side of the screen.  The case information will identify the court and region.
2.   The last step will take you to the court that issued the decision.  Search on that web site, using key words from the case name, to locate the case.

Special Note: Some court web sites do not have a copy of the court's cases.
 

Brief Explanation of U. S. Court System related to Design Patent Law

1.  U. S. regional District Courts are where a design patent suits for infringement or declaratory judgment on validity are filed.  The decisions of these courts can be appealed to the U. S. Court of Appeals, Federal Circuit.

2.  The U. S. Court of Appeals, Federal Circuit (FC), is the only court that reviews issues of design patent law.  Its interpretation of the law must be followed by all U. S. District Courts.  However, some issues related to design patents may become involved in decisions from the regional  Federal Circuit Courts.  For example, insurance contracts related to indemnification of design patent litigation expenses may be decided based on contract law and appealed to a regional Federal Circuit Court, and then presented to the U. S. Supreme Court for possible review.

3.    The final court of review is the U. S. Supreme Court.  Its decisions on matters of U. S. design patent law are the controlling law on the facts of that cases.  Its statements on law not related to the facts of the case may be dicta.  While dicta is not controlling law, it is influential in deciding another case with similar facts or on policy issues.  The U. S. Supreme Court considers whether review a case from the FC.  The process of deciding whether to review requires a petition to the U. S. Supreme Court.

4.  A Court may designate an opinion not for publication (Unpublished), and the legal effect of that decision depends on the rules of that court.  Even with this uncertainty, the Unpublished decisions are made available to the publish, and they offer some guidance on how the a court might decide a case with similar facts.

Special Note on court unpublished decisions that are public record.
1.  For many years U. S. courts have designated certain cases as unpublished, and while the public could obtain access to these cases the practice effect was to make these cases unknow to most legal experts.   The court panel deciding the publishled case may state the case cannot be used as precedent (in support of a legal principle).  It depends on the court and case what the status of an unpublished that the  cases may be.  With the more convenient access to unpublished decisions, in effect making them published, the issue of precedential effect is still a question that has to be evaluated for each case.
2. In the U. S. Court of Appeals, Federal Circuit, the Circuit Court with exclusive jurisdiction on design patent law, the Court's Rule 47.6(b)  states that "[any] opinion or order so designated must not be employed or cited as precedent", and explains other aspects.  The Federal Circuit Rules are found on the Court's web site:  URL http://www.fedcir.gov.
3.  Many recent Federal Circuit cases involving design patent law have been designed as unpublished and not to be used as precedent.  Except in unique circumstances, this database will not list these unpublished decisions.  The primary sources of these cases, for review, are private databases, such as WestLaw and Lexis/Nexus.  As a practical matter, these unpublished decisions remain unaccessible to persons not having access to these special databases.

Recent Cases (most recent case first) and main issues

February 8, 2005
Junker v. Eddings and Xentek Medicial Inc.
(citation to be announced soon and added to this list)
U. S. Court of Appeals, Federal Circuit
Catheter Introducer Sheath
Main issues:  Infringement, breach of non-disclosure agreement, attorney fees, inventorship, willful infringement, utility and design patent relationship, and ornamentality

January 1, 2005
Brooks Furniture Manufacturin, Inc. v. Dutailier International Inc.andDutaillier, Inc.
73 U.S.P.Q. 1457, 393 F.3d 1378
U.S. Court of Appeals, Federal Circuit
Rocking Chair Trim
Attorney fees

October 25, 2004
Capo, Inc. v. Istopics Medical Products, Inc.
73 U.S.P.Q. 2d 1051, 387 F.3d 1352
U. S. Court of Appeals, Federal Circuit
Sunglasses
Main issues:  Declaratory judgment -- when it can be brought

October 20, 2004
Bernhardt, LLC v. Collezione Europa USA, Inc
72 U.S.P.Q. 2d 1901, 386 F.3d 1371
U. S. Court of Appeals, Federal Circuit
Furniture
Main issues:  Novelty -- public use and on sale, infringement, points of novelty -- proof required

January 16, 2004
Minka Lighting, Inc. and Pan Air Electric Co. Ltd. v. Craftman International, Inc.
93 Fed Appx. 214 (Westlaw publication); cert. to U. S. Supreme Court denied, 1255 S. Ct. 50 (2004)
Status:  unpublished and not for use as precedent (special importance as based on amicus brief in petition for cert. by the Industrial Designers Society of American, addressing a major concern in court procedure, a subject needing to be addressed in U. S. law -- amicus brief available on U. S. Supreme Court web site:  URL http://www.supremecourtus.gov/)
U.S.Court of Appeals, Federal Circuit
Ceiling Fan
Main issues:  Doctrine of equivalents, need for ordinary observer evidence, role of court in summary judgment proceeding, use by the district court of drawing claim interpretation using translation of visual design into text description and applying that description

September 24, 2002
Rosco Inc. v. Mirror Lite Co.
64 USPQ2d 1676
U. S. Court of Appeals, Federal Circuit
Automobile mirror
Main issues: Functionality and obviousness

June 28, 2002
Catalina Lighting Inc. v. Lamps Plus
63 USPQ2d 1545
U. S. Court of Appeals, Federal Circuit
Electric lamp
Main issues: Infringement and damages where design patent and utility patent are infringed.

March 13, 2002
Contessa Food Products Inc. v. Conagra Inc
62 USPQ2d 1065
U. S. Court of Appeals Federal Circuit
Shrimp tray
Main issues: Infringement; what is protected visible during normal use test; ordinary observer test.

January 30, 2002
Hoop v. Hoop
61 USPQ2d 1442
U. S. Court of Appeals, Federal Circuit
Pair of motorcycle fairing edge guards
Main issues: Inventorship; preliminary injunction.

December 10, 2001
EKCO Group Inc. v. Travelers Indemnity Co. of Illinois
61 USPQ2d 1038
U. S. Court of Appeals, First Circuit
Main issue:  Commercial general liability insurance policy related to design patent litigation

August 21, 2001
Jazz Photo Corp. v. ITC
59 USPQ2d 1907
U. S. Court of Appeals, Federal Circuit
Camera
Main issues: Right to repair; exhaustion of rights.

July 10, 2001
Door-Master Corp. v. Yorktowne Inc.
59 USPQ2d 1472
U.S. Court of Appeals, Federal Circuit
Door and Frame
Main issues: Novelty; infringement - claim interpretation;  attorney fees;

April 18, 2001
In re Haruna
58 USPQ2d 1517
U.S. Court of Appeals, Federal Circuit
Optical disk
Main issues: Obviousness.

December 20, 2000
Ex parte Robinson
58 USPQ2d 1355
U. S. Patent and Trademark Office, Board of Patent Appeals and Interferences
Container
Main Issues:   Obviousness; primary reference modification.

Special Note: This case is not on the Findlaw web site or on the Federal Courts Emory web site.  It is on the U.S. Patent and Trademark Office web site (http://www.uspto.gov), under the site Index heading Board of Patent Appeals and Interferences, Final Decisions (on June 3, 2003, there was a problem in downloading the file).

November 29, 2000
EKCO Groups Inc. v. Travelers Indemnity Co.
57 USPQ2d 1267
U.S. District Court, District of New Hampshire
Tea kettle
Main issues:  Insurance policy coverage.

June 21, 2000
Decade Industries v. Wood Technology Inc.
55 USPQ2d 1431
U.S. District Court, District of Minnesota
Stereo system stand
Main issues: Insurance policy coverage.

May 3, 2000
Eastern America Trio Products Inc. v. Tang Electronic Corp.
54 USPQ2d 1776
U.S. Southern District of New York
Telephone
Main issues: Inequitable conduct; infringement - points of novelty.

April 20, 2000
ZB Industries Inc. v. Conagra Inc.
56 USPQ2d 1739
U. S. District Court, Central District of California
Tray containing shrimp
Main issues: Infringement - points of novelty; summary judgment

October 25, 1999
Superior Merchandise Co. v. M.G>I. Wholesale Inc.
52 USPQ2d 1935
U. S. District Court, Eastern District of Louisianna
Beads
Main issues: Inventorship; novelty, obviousness; secondary meaning; infringement - claim constructions.

September 20, 1999
Lamps Plus Inc. v. Home Depot USA Inc.
57 USPQ2d 1311
U. S. District Court Central District of California
Lamp
Main issues: Temporary restraining order; novelty; infringement.

September 8, 1999
Sieko Epson Corp. v. Nu-Kote International Inc.
52 USPQ2d 1011
U. S. Court of Appeals Federal Circuit
Ink cartridge
Main issues: What is protected exposed to view during use test; need for artistic merit.

February 11, 1999
Elk Corp. of Dallas v. GAF Building Materials Corp.
49USPQ2d 1853
U. S. Court of Appeals, Federal Circuit
Laminated roofing shingles
Main issues: Inequitable conduct.

November 10, 1998
Goodyear Tire & Rubber Co. v. Hercules Tire and Rubber Co.
U. S. Court of Appeals, Federal Circuit
Tire tread
Main issues: Infringement claim construction and points of novelty.

September 18, 1998
Unidynamics Corp. Automatic Products International Ltd.
48 USPQ2d 1099
U. S. Court of Appeals, Federal Circuit
Vending machine
Main issues: Functionality; infringement points of novelty.

August 14, 1998
Black & Decker (U.S.) Inc. v Cedarberg Industries Inc.
48 USPQ2d 1204
U. S. District Court, Northern District of Illinois
Flashlight
Main issues: Obviousness; infringement - claim construction.

August 5, 1998
Penn Fabrication (U.S.A.) Inc. Soulbella Enterprises Inc.
48 USPQ2d 1319
U. S. District Court, Central District Court of California
Easel
Main issues: Public use.

August 3, 1998
Victus Ltd. v. Collczione Europa U.S.A. Inc.
48 USPQ2d 1145
U. S. District Court, Middle District of North Carolina
Table
Main issues: Infringement; doctrine of infringement.

June 2, 1998
Black & Decker (U.S.) Inc. v. Pro-Tech Power Inc.
U.S. District Court, Eastern District of Virginia
Miter saw
Main issues: Functionality; claim scope.

May 19, 1998
Gargoyles Inc. v. Aearo Corp.
49 USPQ2d 1557
U. S. District Court, District of Massachusetts
Eyeglasses
Main issues: Infringement- points of novelty; impact of defendant's design patents,

February 2, 1998
Adobe Systems Inc. v. Southern Software Inc.
45 USPQ2d 1827
U. S. District Court, Northern District of California
Typeface (computer generated)
Main issues: Statutory subject matter; inequitable conduct.

January 8, 1998
Child Craft Industries Inc. v. Simmons Juvenile Products Co.
45 USPQ2d 1933
U. S. District Court, Southern District of Indiana
Furniture - crib endboard
Main issues: Infringement.

December 27, 1997
DCNL Inc. v. Almar Sales Co.
47 USPQ2d1406
U. S. District Court, Northern District of California
Hair brushes
Main issues: Drawing vagueness.

October 20, 1997 (Unpublished)
American Eagle Wheel Corp. v. American Racing Equipment Inc.
45 USPQ2d 1319
U. S. Court of Appeals, Federal Circuit
Vehicle wheel front face
Main issues: Reference to commercial embodiment of patent.

October 20, 1997
April 24, 1997
Motorola Inc. v. Qualcomm Inc.
45 USPQ2d 1558
U. S. District Court, Southern District of California
Telephone housing
Main issues: Infringement; priority.
 

End of Document

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This page was last updated on March 9, 2005.

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