One of the main features of the Florida IP Trends blog is a focused look at Florida intellectual property cases. I plan to provide a weekly list of IP cases filed in the Northern, Middle, and Southern District Courts in Florida. From those cases, I’ll pick one or two per month as the Featured Case.

I’ll also provide documents and commentary related to these cases as a service to fellow attorneys and the public. The Featured Cases will contain interesting legal claims, procedural issues, or other “standout” topics that will be of interest to those tracking IP cases in Florida.

With that, here is Florida IP Trend’s first Featured Case:

Great Neck Saw Manufacturers, Inc. v. Iron Bridge Tools, Inc., et. al., Case No. 1:08-cv-23266

[Download a copy of the Complaint HERE]

Plaintiff Great Neck Saw Manufacturers (“Great Neck”) is a New York corporation and the assignee of U.S. Patent Nos. 7,040,022 (the ‘022 patent), D495,039 (the ‘039 patent), D501,782 (the ‘782 patent), D510,250 (the ‘250 patent), D526,877 (the ‘877 patent), D528,895 (the ‘895 patent), and D543,822 (the ‘822 patent) – all which are allegedly infringed by the Defendants’ knives. Great Neck also alleged trade dress infringement, false designation of origin, unfair competition, unprivileged imitation, and passing off.

Defendants Iron Bridge and Black Pearl are Florida corporations while Defendant Everpower is a Chinese corporation. Defendants allegedly infringed Great Neck’s utility and design patents for folding utility knives, including knives sold under the HUSKY brand name.

I’m tracking this case in part due to the design patent claims. There are very few reported design patent infringement cases post-Egyptian Goddess, which set out the new “familiar ordinary observer” standard. At least one of the cases interpreting the new test seems to have used the “three-way test” (in which the prior art, accused design, and patented design are simply compared against one another) despite stating that its analysis was based on the familiar ordinary observer test. See Arc’Teryx Equip., Inc. v. Westcomb Outerwear, Inc., 2008 U.S. Dist. LEXIS 90228 (D. Utah Nov. 3, 2008).

Another interesting aspect to this case is the trade dress infringement claim. In order for trade dress to be protectable, the asserted features must not be functional, rather, they must be ornamental in nature. In reciting the trade dress in the utility knives, Great Neck stated in its Complaint:

Great Neck’s trade dress consists of the non-functional features and appearance of its utility knives comprising the shapes, size and appearance of the various parts of the utility knives.

At least one court in Florida has dismissed a trade dress claim for such an ambiguous description of a product’s trade dress. In Knights Armament v. Optical Sys. Tech., the Middle District chastised the Plaintiff with:

[Plaintiff] alleges that its trade dress is not functional and is distinctive, with respect to finish, shape, and exterior design, but does not explain why it is distinctive and nonfunctional, nor what actually comprises the trade dress or how the Knights Defendants infringe on it … These sparse facts and conclusory allegations constitute a mere recitation of the elements of the cause of action for trade dress infringement, which is insufficient to survive a motion to dismiss. Twombly, 127 S. Ct. at 1965. Thus, the Court holds that OSTI’s claim of trade dress infringement is dismissed without prejudice.
– Knights Armament Co. v. Optical Sys. Tech., 568 F. Supp. 2d 1369, 1376-1377 (M.D. Fla. 2008)

I’ll update this post as new developments occur, and I look forward to seeing how Florida courts begin to interpret the recent Egyptian Goddess decision.

Posted by: Kevin Wimberly