National Flooring Equipment is a family-run business known for its innovative designs related to tools used for flooring installation, care and removal.  For more than 24 years, Nikolai & Mersereau has helped National protect its intellectual property.

In 2001, Marty Anderson came to us seeking to protect a novel walk-behind floor stripping machine with a hydraulic drive.  We filed a patent application covering the design in June of 2001 and U.S. Patent 6,609,762 was granted in August of 2003 covering Mr. Anderson’s invention.

Almost immediately upon their introduction, products incorporating Mr. Anderson’s invention became a huge commercial success.  Despite the success of the products, competitors stayed away based on the strength of the patent, that is, until early last year when a competitor, EDCO, introduced two infringing products under the Trademark SPTS-12 Tile Shark.  Recognizing the threat this infringement created and despite the economic downturn affecting the building trades, National asked us to take action to abate the infringement.

On behalf of National, we filed suit on April 24, 2009.  That suit was concluded last week.  EDCO acknowledged the validity of the patent’s claims as originally granted.  As a result of the settlement reached, the competitor will no longer be offering the SPTS-12 Tile Shark products which the parties agreed infringe.

It appears that Bratz^® dolls will not be on the shelves of your favorite toy stores after 2009.  U.S. District Judge Stephen Larson ruled that the manufacturer, MGA Entertainment, Inc., must cease manufacturing, distributing and offering for sale Bratz^® dolls by the end of 2009.

The order issued by Judge Larson is just one more chapter in the long dispute between Mattel and MGA.  Originally, Mattel sued MGA asserting that Mattel owns the copyrights and other related intellectual property to the Bratz^® line of dolls.  (See our July 23, 2008 blog entry).  The jury found MGA infringed Mattel’s copyrights.  The jury also found that MGA intentionally interfered with Mattel’s contractual relations.  In total, the jury awarded Mattel over $100 million.  Of the $100 million, MGA is responsible for about $68 million and Isaac Liarian (MGA’s CEO) is responsible for about $33 million.  These financial issues are currently at a stand-still while a court-appointed forensic auditor reviews all of MGA’s financial records.

Judge Larson also permanently enjoined MGA from  making and selling any Bratz^®, or Bratz^®-like, dolls or using any trademark, copyright or other image which may be similar to the Bratz^® dolls after December 31, 2009.  MGA appealed Judge Larson’s injunction order to the 9^th Circuit.  However, the 9^th Circuit Court of Appeals dismissed this appeal on January 14, 2009 for lack of jurisdiction since Judge Larson’s order was not yet final.

In a decision handed down this week, the Court of Appeals for the Federal Circuit (CAFC) revised what is needed to establish infringement of a patent on an ornamental design.  In a case entitled Egyptian Goddess v. Swisa, Inc. (Fed. Cir. No. 2006-1562, 9/22/08), the court threw out the so-called “point of novelty” test and held that the only test that should be applied is that established by the U.S. Supreme Court over 135 years ago in Graham Co. v. White, 81 U.S. 511, 1871.

Under Graham, “If in the eye of an ordinary observer, given the attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”  This has been referred to as the “ordinary observer” test.

Beginning in 1984, the CAFC added a further requirement to a finding of infringement that required that the accused infringing design also embody the feature that comprised “the point of novelty” of the patented design, i.e., the aspect that distinguished the patented design from the prior art.

In the Egyptian Goddess case, the CAFC concluded that the “point of novelty” test should no longer by used in the analysis of a claim of design patent infringement and that the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed.  The CAFC went on to say, however, that in applying the “ordinary observer” test, an examination of any novel feature of the patented design must also be considered, i.e., the prior art must be taken into account.

Even though the Egyptian Goddess case attempted to lay the “point of novelty” test to rest, the mummy still stalks the earth.

Laurie Young                (612) 392-7309           Laurie.Young@nm-iplaw.com

Your invention is the basis for a product being sold to millions worldwide generating millions of dollars of revenue.  This should make you a millionaire, right?  Not always!

In Apple Computer, Inc. v. Burst.com, Inc. 2007 WL 33428929 (N.D.Cal. 2007) Apple defended an infringement claim by asserting the underlying technology used in its digital audio player (iPod^®) was actually invented as early as 1979 before many of its customers were even born.

In the case Apple Computer sought a declaration of invalidity and noninfringement of four U.S. patents owned by Burst.com.  These patents related to the sharing, editing and playing of audio and video works through computers.  In support of its contention of the invalidity of the patents owned by Burst.com, Apple Computer asserted U.S. Patent No. 4,667,088 issued to Kane Kramer taught the invention claimed in the Burst patents, thus rendering those patents invalid for anticipation or obviousness.

You may be asking yourself why doesn’t Kramer assert his U.S. patent against Apple and obtain royalties from the sales of iPod^®?  The reason is his U.S. patent expired in 1991 and his British patent expired in 1988.  The iPod^® first went on sale in late 2001.  Therefore, Apple was never in fear of any litigation or request of royalties from Mr. Kramer.  While Apple owns several patents related to aspects of the iPod^®, the core technology used in the iPod^® was the subject of patents expiring a decade before the iPod^® was introduced.

The iPod^® clearly enjoys enormous success.  This success is attributable to marketing, ease of use, the user friendly nature of iTunes^® to keep its competitors at bay and the improvement patents owned by Apple related to features of the iPod^® making it attractive to the consumer.  Imagine if Apple had an enforceable patent similar in scope to Mr. Kramer’s to protect a digital audio player.  Apple would not only hold the dominant market position it holds today, but would likely hold a monopoly.  No doubt Mr. Kramer’s name would be mentioned with those of Steve Jobs and Bill Gates.  Unfortunately for Mr. Kramer, he was ahead of his time. 

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

Nikolai & Mersereau, P.A. recently helped secure a favorable ruling in the U.S. District Court for the District of Minnesota on behalf of Cognex Corporation.  This ruling has been the subject of considerable reporting and blogging in intellectual property circles.  The Court granted Cognex’s motions for summary judgment holding the patent-in-suit not only invalid, but also unenforceable due to inequitable conduct by the defendants during procurement of the patent.  The patent in question relates to a system for capturing and reading two-dimensional symbols.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com