Your Hotel Desk Chair May Be Patented

On February 13, 2013, Global Allies, LLC brought an infringement action against Charter Furniture Corp. for infringement of U.S. Design Patent No. D622,987. Case No. C-13-0651 (JCS) (N.D. Cal.). A figure from the '897 patent is shown below.

The '897 patent is a reminder that even seemingly utilitarian items, such as "task chairs," can potentially be subject to design patent protection. However, the utilitarian nature of any design might limit the scope of the design patent or, in a worse case scenario for the patentee, render the patent invalid. The innovative designer will work with patent counsel to determine what components can and should be patented. In the mean time, you may want to check if your hotel desk chair is patented!

Textile Company Slams Furniture Manufacturer and Retailers with Copyright Infringement Suit

On February 7, 2013, textile company Swavelle/Mill Creek Fabrics (New York, NY), along with related entities Textile Fabric Associates, LLC and Swavelle Trading (Shanghai) Co., Ltd., sued furniture manufacturer Jackson Furniture Industries, Inc. (Cleveland, TN), three named retailers (Bob's Discount Furniture, Inc.; Corner Furniture Discount Center, Inc.; and Elizabeth Furniture & Mattress Corp.), and "John Doe Retail Stores Nos. 1-50" for copyright infringement, tortious interference with prospective economic advantage, and unfair competition under New York common law. Case No. 1:13-cv-911-VM.

In its complaint, Swavelle alleges that Jackson Furniture had regularly purchased textiles from Swavelle in the past to manufacturer its furniture. Notwithstanding that past relationship, Jackson Furniture allegedly manufactured furniture with fabric patterns that infringe at least five different copyright protected fabrics owned by Swavelle. Based on the complaint, Swavelle has registrations on three of the five fabric patterns. The complaint does not allege that Swavelle has pending applications for the other two fabric patterns or if an application on such works was ever filed and rejected. However, Swavelle's copyright infringement claims only allege infringement of the three registered works.

The case represents an aggressive enforcement action by a copyright holder against a manufacturer and retailers. Typically we see right-holders going after other "knock-off" manufacturers. Only in aggressive circumstances do we see retailers named as defendants.

Federal Circuit Addresses Pleading Standard for Design Patents

In Hall v. Bed Bath & Beyond, Inc., et al., the United States Court of Appeals for the Federal Circuit ("CAFC") addressed the standard for pleading infringement of a design patent. Case No. 2011-1165, 2011-1235 (Jan. 25, 2013). In Hall, the district court dismissed plaintiff/patentee's infringement claim for failure to state a claim. The Federal Circuit reversed that decision and remanded.

Hall invented a large tote towel with bindings, zippered pockets, and a cloth loop. He provided samples of the product to Bed Bath & Beyond ("BB&B") marked as "patent pending." Hall contends that BB&B copied the towel design and manufactured and sold copies. Hall sued BB&B, one of its executives in his personal capacity, and a BB&B supplier for design patent infringement once his application issued as U.S. Design Patent No. D596,439. The defendants raised various defenses and counterclaims. The district court dismissed all of Hall's claims on defendants' motion under Rule 12(b)(6) for failure to state a claim.

The district court stated that Hall's patent infringement complaint did not contain "any allegations to show what aspects of the Tote Towel merit design patent protection, or how each Defendant has infringed the protected patent claim." The CAFC outlined five elements of a patent infringement pleading:

1. allege ownership of the patent
2. name each defendant
3. cite the patent that is allegedly infringed
4. state the means by which the defendant allegedly infringes
5. point to the section of the patent law invoked

The district court required more, however, including for Hall to answer the question "[w]hat is it about Plaintiff's towel that he claims is 'new, original and ornamental,' meriting the protection of a design patent?" The CAFC held that neither the Federal Rules of Civil Procedure, Twombly, or Iqbal require a design patent plaintiff to set forth such specific information in the complaint. The CAFC also noted that the district court erred as Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) only requires infringement of a design patent "as a whole," and not on any "points of novelty." The CAFC held the district court erred by requiring the complaint to identify "new, original, and ornamental" aspects of the design. However, the CAFC affirmed the dismissal of the claims against the executives in their personal capacity as the alleged acts taken the by executive occurred before the patent issued. The CAFC noted that the district court did not address the executive's personal liability for inducing infringement under 35 U.S.C. §271(b).