757 F. Supp. 2d 1050
S.D. Cal.2010Background
- Oakley, Inc. sues Bugaboos for patent/trademark infringement; Bugaboos counters that Oakley false marks under 35 U.S.C. §292; warranty cards packaged with Oakley eyewear list patents; some listed patents allegedly not owned by Oakley or unrelated; petition centers on whether warranty cards can trigger §292 liability; court considers Oakley’s motion for summary judgment (Doc. 27) and Bugaboos’ opposition (Doc. 59) with Oakley reply (Doc. 67); court grants summary judgment on seventh counterclaim for false marking based on warranty cards; Rule 56(f) discovery requests denied; no factual disputes remaining on this issue; background includes surrounding patent/marking allegations and packaging language.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether warranty cards can give rise to §292 liability | Oakley: warranty cards cannot satisfy §292 | Bugaboos: warranty cards/contents may constitute false marking | Warranty cards cannot support §292 liability as a matter of law |
Key Cases Cited
- Pequignot v. Solo Cup Co., 608 F.3d 1356 (Fed. Cir. 2010) (coverage language on packaging not liable without intent to deceive)
- Clontech Labs., Inc. v. Invitrogen Corp., 263 F. Supp. 2d 780 (D. Del. 2003) (false marking requires specific patent coverage on unpatented article with intent to deceive)
- Robinson v. Shell Oil Co., 519 U.S. 337 (U.S. 1997) (definition of advertising for purposes of broad interpretation of terms)
- Newcal Indus., Inc. v. Ikon Office Solution, 513 F.3d 1038 (9th Cir. 2008) (advertising/promotion standards in Lanham Act context informing false marking scope)
- Accent Designs, Inc. v. Jan Jewelry Designs, Inc., 827 F. Supp. 957 (S.D.N.Y. 1993) (uses in advertising must pertain to publications promoting the unpatented product)