Chinese manufacturer fights back against allegations of design patent infringement. SHFM v. WIBN

A patent is a set of exclusive rights granted to the inventor of an invention that meets certain criteria. Utility patents are what most people think of when they use the term patent. However the design of an article of manufacture can also be protected by a design patent.

A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.

The United States Patent and Trademark Office (USPTO) examines applications and grants patents on inventions when applicants are entitled to them. The patent law provides for the granting of design patents to any person who has invented any new, original and ornamental design for an article of manufacture. A design patent protects only the appearance of the article and not structural or utilitarian features.

Design patents are generally seen as a weaker form of protection than a utility patent because a design patent only protects the way an object looks. However, a design patents still grants its owner the exclusive right to make, use, sell and import the design in the United States. Sometimes a the owner of a design patent can get over zealous in the protection of their patent rights. When a design patent owner repeatedly accuses someone of design patent infringement or the design patent owner publicly complains about alleged infringement, this can cause the accused person damages. When someone believes that they are wrongly accused of a patent infringement, they can bring a declaratory judgement.

SHANDONG HONGHUI FOOD MACHINERY CO., LTD. v. WOULDN’T IT BE NICE LLC, 2:19-cv-07347 (C.D.CA 2019) is an example of a company accused of patent infringement requesting a declaratory judgement of non-infringement. The plaintiff in this case is a seller of velvet hair scrunchies and retails these products through e-commerce sites. The defendant in this case holds United States Design Patent No. D851,833. Examples of products from both the plaintiff and the defendant are reproduced above.

Defendant has repeatedly asserted that the plaintiff’s products infringe on the defendant’s design patent. The plaintiff contents that it’s products do not infringe on the design patent and that the plaintiff has the right to make, use, and sell its products in the United States. In June 2019, the Defendant sent a complaint, accusing the plaintiff of patent infringement, to one of the eCommerce sites on which the plaintiff sells products. Because of the defendant’s letter, the eCommerce site suspended the plaintiff’s scrunchie product listing.

The plaintiff then filed a complaint against the defendant in Federal District Court in California. The complaint itemizes a number of differences between the accused product and the defendant’s design patent. The lawsuit requests that the court declare that the plaintiff’s velvet hair scrunchies do not infringe on the defendant’s design patent and that the plaintiff be awarded attorney’s fees.

At first glance it seems like the defendant will have a difficult time defending itself. There are differences between the accused product and what is described in the design patent. We will have to wait and see how the defendant responds in its answer.

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