Juul Labs, Inc. v. Nikant 167, Inc. (D. Mass. 20-cv-11304).

Juul accuses Nikant of infringing four design patents related to vaporization cartridges.  Nikant, who allegedly conducts business through a store front called “City Smoke” on Newbury Street, sells ES JUUL COMPATIBLE PODS that are accused of infringement.  This case in one of 29 cases asserting the same patents filed last week.  The case is before Judge Gorton.

Converse Inc. v. Steven Madden Ltd. (D. Mass. 20-cv-11032).

Boston shoe manufacturer Converse accuses Steve Madden Ltd. of infringing two design patents covering soles of sneakers.  Converse’s two patents, D873,547 and D874,106, cover portions of the sole of Converse’s Run Star Hike sneaker.Converse Run Star Hike

The ‘106 patent covers the rear portion of the sole (the black portion of the Converse sneaker at right), while the ‘547 patent covers the sole from about the mid-point of the front, tan section to the midpoint of the rearm black portion.  The remainder of the sneaker was disclaimed in both patents.

 

Converse asserts that Madden’s Madden Girl Winnona Flatform Hi-Top infringes the ‘106 patent. madden-girl-White-Fabric-WinonaConverse sent Madden a cease and desist letter shortly after the Madden Girl Winnona Flatform Hi-Top became available in March.  Not only did Madden continue selling the accused sneaker, Madden introduced a second model, the Shark sneaker, that Converse says infringes both design patents because it copies the two-part sole of the Converse sneaker.

 

This case demonstrates the importance of claiming many different aspects of a product design.  Here, by disclaiming the non-sole portions of the shoe, Converse enabled a broad scope that would cover sneakers having uppers that differed from Converse’s actual product.  Further, by having the front of the rear part of the sole in broken lines in the ‘106 patent, the patent potentially covers both Madden sneakers.

UPDATE – many thanks to The Fashion Law for quoting me in their report on this case.  You can read their analysis of this case here, and check out the rest of their insights into fashion law, both intellectual property and otherwise, at www.thefashionlaw.com.

 

JW Reilly LLC v. Bally Americas Inc. et al. (19-cv-11007).

JW Reilly, a business run by Judith Reilly to sell her sterling silver products, sued Swiss shoemaker Bally, accusing Bally of infringing a design patent on a shoe buckle. The design, set forth in U.S. D667,212, appears to be a clip-on accessory, as opposed to a true buckle, that has a rectangular face and that clips over the front, toe portion of a shoe. JW Reilly sells buckles asserted to be embodiments of the design patent in which the buckle can be engraved with wording, initials or a design. shoebuckles1

Ms. Reilly asserts that she approached the manager of Bally’s Copley Place store in 2013 to discuss hosting a fund-raising event to support the Boston One Fund, a charity to assist families of those killed or injured in the Marathon bombing. In connection with her proposal, she asserts that she provided a description and photograph of her buckles that specifically indicated that they were protected by the ‘212 patent. Bally’s declined to participate in the proposed fund-raiser. bally-pink-purple-heline-pumps-pink-product-0-957859960-normal

Ms. Reilly indicates that she subsequently became aware that Bally was offering three shoe designs that included buckles that she believes to be infringements of her patent. She asserts that Bally copied her design. The case has been assigned to Judge Saris.

Acushnet Company v. Golf Gods Pty ltd. (18-cv-12093).

Acushnet filed an amended complaint, adding a claim that Golf Gods infringes Acushnet’s D763,682 design patent covering the ornamental design of its golf ball packaging. This adds to the trademark and trade dress infringement claims previously filed by Acushnet, which makes Titleist and Footjoy golf products.

The Helping Hand Company (Ledbury) Ltd. v. Vive Health, LLC (18-cv-10996).

HANDIGRIPHelping Hand makes and sells a line of TRU-GRIP products for reaching and picking up objects.  Helping Hand obtained a pair of design patents covering the gripping end of the products, and accuses Vive Health of infringing these patents.  It seems unlikely that Massachusetts is the proper venue for this lawsuit; while Helping Hands has a division located in Stoughton Massachusetts, Vive Health is located in Florida, and there are no allegations that it maintains a regular place of business in Massachusetts.

Global Protection Corp. et al. v. Arthur et al. (18-cv-10966).

Global Protection is a condom company formed by Tufts graduates in 1988.  Global and its Malaysian owner/manufacturer, Karex Berhad SDN BHD, bring charges of trademark infringement, design patent infringement and unfair competition against Eric Arthur and his company, MSC of Fort Smith, doing business as MSCI.  Global has an incontestable mark for “ONE” for use with condoms, and Karex owns a design patent on a foil package for a condom.

One condoms

MSCI sells condoms in a similar foil package with a large “1” on the packaging, which Global alleges will likely cause confusion.  Global seeks injunctive and monetary relief as well as fees and costs.