Product design holds tremendous monetary value. This leads some successful designs to fall victim to knock-offs that can result in damage to brand loyalty and loss of revenue. Design patents are an effective tool in combating those who attempt to profit from the success of others. There are few, if any, law firms in the country with more experience than Sterne Kessler in obtaining and enforcing design rights worldwide.
Long before other law firms saw the value of design patents, the Sterne Kessler team was breaking new ground. More than 25 years later, we are still developing comprehensive programs to help companies protect their unique product designs and eliminate knock-offs in the marketplace. We have been sought out to help protect some of the most iconic designs in the world. For example, smart phone design patents we obtained survived one of the most contentiously fought patent litigations in history.
Why Sterne Kessler?
Procurement of Global Design Rights
- We were one of the first firms to challenge the conventional wisdom that design patents take too long to get and their scope is too narrow. By understanding what causes examination delay, we can quickly usher patent applications through the system.
- We dispelled the notion that a design patent must claim the entire product, which can result in narrow protection. By focusing on product features, we have obtained hundreds of design patents on portions of a product, in addition to protecting the product as a whole. This provides more flexibility when it comes to stopping knock-offs. We also use continuing application practice to ensnare copiers who draw inspiration from designs, even when those designs are not exact copies.
- For those with global brands, we work with an international network of law firms who like us, are experts in design rights. Together, we create coordinated strategies for protecting design rights worldwide including using the Hague System for the International Registration of Industrial Rights.
- In some countries, protection for designs has not yet caught up with technological advancements and market realities. In some jurisdictions, we have brought test cases to challenge the legal system in an effort to bring about changes in the law that are in line with current trends. We are also briefing overseas patent offices on the importance of design patent protection in emerging technology areas.
Design Patent Enforcement
- We have been counsel in scores of design patent enforcement litigations resulting in millions of dollars in recoveries from design patent infringements. Where settlement negotiations prove fruitless, we routinely seek to have design patent cases mediated in order to obtain a quick result. Where appropriate, we move for preliminary injunctions and summary judgment to cost-effectively and quickly resolve the case.
- We partner with clients to identify offending products at tradeshows and in the marketplace. As an example, we successfully monitored the market for offending product designs resulting in over a $1M recovery in the apparel industry and elimination of the knock-off problem.
- Assisted the Intellectual Property Owners Association in drafting its recommendation that the U.S. Customs and Border Protection agency immediately share information with IP rights holders regarding detained products. In addition, IPO proposed statutory and regulatory authority for the agency to extend full border enforcement protection to design patents
Representative design patent enforcement matters include:
- Reebok International Ltd v. J. Baker – successfully obtained a preliminary injunction from the Court of Appeals of the Federal Circuit while considering appeal of District Court order denying Reebok’s motion for preliminary relief.
- Rally Manufacturing, Inc. v. Mr. Gasket Company – Obtained a favorable settlement for Mr. Gasket in a case involving 20+ design patents relating to automotive accessories.
- The Rockport Company, Inc. v. Payless ShoeSource Inc. - Motion for summary judgment of infringement granted; case settled.
The Sterne Kessler design team is working to clarify and strengthen design patent case law.
- Filed an amicus brief on behalf of the Intellectual Property Owners Association in Egyptian Goddess, Inc. and Adi Torkiya v. Swisa, Inc. and DROR Swisa to enlighten the Court about an excessive tendency to verbalize the scope of design patents leading to a process in which litigants, courts and juries fail to focus attention on the design itself and instead treat a design patent as embodying something described in very specific and detailed verbal terms through a process of "construction" and explicit articulation of "points of novelty.
- Filed an amicus brief with the U.S. Court of Appeals for the Federal Circuit in In re Owens 2012-1261 on behalf of Method Products, Inc., one of the fastest growing private companies in America and a leading innovator of premium healthy home and personal care products. Method filed the brief to enlighten the Court about the inconsistent and arbitrary positions the United States Patent & Trademark Office was taking with regard to unclaimed subject matter in design patents.
Members of the Sterne Kessler design team have served as expert witnesses in design patent litigation before Federal District Courts and the International Trade Commission. Representative cases include:
- In the Matter of Certain Automotive Parts on behalf of Ford Global Technologies
- In the Matter of Certain Wind and Solar-Powered Light Posts and Street Lamps on behalf of The Stress Crete Group, King Luminaire, Inc., Gus Power Incorporated and Efston Science, Inc
- In the Matter of Certain Kinesiotherapy Devices and Components Thereof on behalf of Standard Innovation Corporation
- In the Matter of Certain Automotive Vehicles and Designs Therefore on behalf of Xingyue Group Co., Ltd., Shanghai Xingyue Power Machinery Co. Ltd., Shanghai Xingyue USA, Inc., Zhejiang Xingyue Vehicle Co. Ltd., Shanghai Tandem Industrial Co., Ltd. and Boat N RV Supercenter
- In the Matter of Certain Compact Multipurpose Tools on behalf of Leatherman Inc.
- Boucheron Inc. v. Perfumania on behalf of Perfumania
Tracy Durkin has served as an advisor to the Honorable Judge Joy Flowers Conti of the Federal District Court for the Western District of Pennsylvania in the case of American Beverage Corp. v. Diageo involving claims of design patent and trade dress infringement.