Sarah FackrellSep 19, 2023

Wallet Ninja wins design patent infringement case in EDNY:
https://www.law360.com/ip/articles/1722449/long-island-suit-over-wallet-gadgets-ends-in-1-9m-verdict

#DesignPatents #WalletNinja

Long Island Suit Over Wallet Gadgets Ends In $1.9M Verdict - Law360

A federal jury in Long Island found last week that one New York marketing company owed another business nearly $1.9 million for selling Swiss Army knife-like gadgets as marketing swag to banks and other businesses that infringe a design patent.

Show threadSarah FackrellSep 19, 2023

I would have actually said no infringement here (the shapes aren't the same) but the jury may have been influenced by the defendant's copying, including copying of unclaimed visual elements of the design.

https://design-law.tumblr.com/post/728897124706697216/does-this-multitool-infringe-this-design-patent-a

Design Law

Does this multitool infringe this design patent? A Long Island jury just said "yes." I would have actually said no, but the jury may have been influenced by (non-claimed) visual similarities between...

Tumblr
Show threadSarah FackrellSep 19, 2023

As you know if you've been following me here for a while, the test is NOT: "Does this product look like the patentee's product?" I

It's: "Does this product look like the patented design?"

Show threadSarah Fackrell

Nonetheless, we see this kind of thing over and over.

Recall, for example, Judge Koh holding up the two tablets in #AppSung (even though the claimed tablet design didn't look like the Apple product).

Sep 19, 2023 at 1:38pmWeb
Show threadSarah FackrellSep 19, 2023
Anyway, in the Wallet Ninja case, Law360 reports that: "Midtrial, one of the experts Berlowitz called had confused the two company's different cards for each other, which Cukor said was a real turning point in the trial."
Show threadSarah FackrellSep 19, 2023
Again, the test isn't confusion but it's easy to see how that would look to a jury.
Show threadSarah FackrellSep 19, 2023

Anyway, fun fact: This plaintiff was, in a prior case, on the receiving end of one of the worst design patent infringement claims I've ever seen.

Yes, that's right: The monkey tool.

https://www.scribd.com/document/333625598/Caffeinate-Labs-v-Vante-Complaint

Caffeinate Labs v. Vante - Complaint | PDF | United States Patent And Trademark Office | Diversity Jurisdiction

Caffeinate Labs v. Vante - Complaint

Scribd
Show threadAlyson DeckerSep 19, 2023
@design_law Do you think these cases would be better suited for a bench trial? Assumption being Judges might be better able to follow the strict letter of the law versus their eyes.
Show threadSarah FackrellSep 19, 2023
@alysondecker Honestly, I think this should have been dismissed on the pleadings. But there aren't a lot of DP cases in EDNY, so the judge probably wasn't familiar with the law. I haven't checked the docket to see if the defendant tried, either.
Show threadSarah FackrellSep 19, 2023
@alysondecker In general, I think that juries can be really swayed by stories of "copying," regardless of the law. And in this area, there's no guarantee the defense counsel really knows/understands the law, which is a problem at all stages