Chen v. Taller - Complaint

7/26/2019 Chen v. Taller - Complaint

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COMPLAINT FOR DECLARATORY JUDGMENT AND TORTIOUS INTERFERENCE

DOYLELOWL

LP

Jaime B. Herren (SBN 271680)[email protected] P. Doyle, Jr. (SBN 112459)[email protected] LOWLLP

3640 Mt. Diablo Blvd., Suite 202Lafayette, CA 94549925.295.1800 telephone925.298.5944 fax

Attorneys for PlaintiffYung Tseng Chendba Origami Unicorn

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

Yung Tseng Chen, an individual,dba as Origami Unicorn,

Plaintiff,

v.

Benjamin Taller, an individual,

Defendant.

Case No. Case No.

COMPLAINT FOR DECLARATORYJUDGMENT AND TORTIOUSINTERFERENCE

Declaratory Judgment Act,28 U.S.C. 2201-2202

DEMAND FOR JURY TRIAL

Plaintiff, Yung Tseng Chen, an individual, for her Complaint for Declaratory Judgment

and Tortious Interference against Benjamin Taller, an individual, alleges as follows:

PARTIES

1. Plaintiff, Yung Tseng Chen, (hereafter Plaintiff or Plaintiff Chen) is an

individual doing business as Origami Unicorn, who maintains a principal place of business at 630

Joost Avenue, San Francisco, CA 94127, and does business within this Judicial District.

2. On information and belief, Defendant Benjamin Taller, an individual, (hereafter

Defendant or Defendant Taller) is an individual residing within the State of California, who

maintains a principal place of business in Berkeley, California and does business within this

Case3:15-cv-03821-SK Document1 Filed08/20/15 Page1 of 7


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Judicial District. Defendant Taller is the owner of Rolo Travel (Rolo), which sells a travel

accessory it alleges is covered by United States Design Patent D720,537 (the D537 Patent, a

copy of which is attached as Exhibit A) and does business within this Judicial District.

JURISDICTION AND VENUE

1. This Court has original jurisdiction over this action under the Federal Declaratory

Judgments Act, 28 U.S.C. 2201 and 2202, and the patent laws of the United States, 35 U.S.C

1 et seq. The Federal Courts are conferred exclusive subject matter jurisdiction over patents

under 28 U.S.C. 1338.

2.

This Court has jurisdiction over the subject matter of the tortious interference claim

under 28 U.S.C. 1367(a).

3. Venue is proper in this Court because Plaintiff is located within and/or doing

business within this state, and Defendant Taller is located within and/or doing business within this

state.

4. Defendant alleges he is the owner of the D537 Patent.

5. Defendant alleges that Plaintiff is infringing the D537 Patent.

6. An actual and justiciable controversy has arisen and now exists between Plaintiff

and Defendant as to whether the D537 Patent is infringed and whether the D537 Patent is valid.

INTRA-DISTRICT ASSIGNMENT

7. Pursuant to the Civil Local Rule, Rule 3-2, subdivisions (c) and (d), this action is

properly assigned to either the San Francisco or Oakland division of this Court because a

substantial portion of the events giving rise to this dispute occurred in the County of San Francisco

California.

FACTUAL BACKGROUND

8. Plaintiff, Connie Yung Tseng Chen, is a Taiwanese award winning industrial



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LP

designer based in San Francisco. She started her industrial design career in the tech industry

working for large corporations in Taiwan before moving to the Bay Area in 2005.

9. Plaintiff Chen joined a program held by the Taipei Design Center (TDC) to

experience the design process in renowned design studios across the USA, joined One & Co (now

HTC) during the TDC program, and decided to stay in San Francisco. For almost 10 years she has

worked as a Senior Industrial Designer on medical devices and consumer products such as Pacific

Biosciences DNA Sequencer, Cutera Laser Systems, and Etymotic Headset at Zoe Design.

10. Plaintiff is doing business as ORIGAMI UNICORN, a design studio based in San

Francisco, California. Plaintiff designs and develops products that improve everyday life and she

has the project of building a long lasting brand through great design and quality.

11. Plaintiff Chen has always been passionate about designing and creating soft goods

and started developing a line of products to improve everyday life. A travel organizer, named

TUO, is her first product.

12. The travel organizer idea came to her while she was going on a trip to France. She

made a prototype to put all her undergarments together. It was designed to allow travelers to

organize their undergarments or small items neatly in a foldable bag which acts as a portable closet

for their trip.

13. After spending months perfecting the product, she finally created the finished look

of TUO. See the July 10, 2015 Press Release attached as Exhibit B.

14.

The TUO is made of a water resistant nylon fabric and features three see through

mesh zippered compartments to pack and organize undergarments, accessories and small clothing

items together. Its utilitarian and compact design is intended to be the ultimate in functionality

To help save space in a suitcase, it unfolds. It also features a detachable handle to hang it from a

closet or a towel bar to access items easily.

15. To improve its functionality there are also two sets of internal pockets to increase

privacy and separation of smaller items, and a mini dirty laundry bag with two pockets to help sor

items as needed. When travelers are ready to leave the hotel, they simply need to fold the bag in



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thirds, snap the side buttons, and they are ready to go. Other, less functional versions, have been

around for many years.

16. To finance her new TUO travel organizer project, Plaintiff Chen launched a

Kickstarter campaign in mid-July 2015. A Kickstarter campaign is a new way for filmmakers

musicians, artists, and designers to crowd-fund creative projects by using the Kickstarter.com

internet site.

17. Plaintiff Chens Kickstarter campaign was intended to raise an initial funding goal

of $15,000.00. As of the filing of this Complaint, the Kickstarter campaign has far exceeded tha

initial goal and has over $85,000.00 committed. It is due to fund on Monday, August 24, 2015.

18.

Defendant is the owner of the D537 Patent, a Design Patent, and has hired counse

to threaten Plaintiff with litigation if she does not stop her Kickstarter campaign or pay a 10%

royalty to him. A copy of his counsels initial cease and desist letter is attached as Exhibit C.

19.

Correspondence continued in an attempt to understand the merits of Defendants

claim, and rather that provide such an explanation, Defendants counsel finished the discussions

explaining why he would not respond to the merits of the inquiry, stating:

I am operating under instructions from my client, who is very interested in either quicklyreaching a licensing deal or filing suit to show we mean business. He reasonably believesthat he being harmed by every additional day your client offers her product for sale.

Any back-and-forth about what is covered by the patent and whether your clientsproduct infringes it is, in my clients opinion, just going to delay the resolution of thismatter. To the extent we are required to share our understanding of the patent and itsinfringement as part of the normal pre-trial process, we will do that. However, we see nobenefit in doing that now.

[A true and correct copy of the underlying correspondence, following Exhibit C, is attached as

Exhibit D hereto.]

FIRST COUNT

(Declaratory Relief for Non-Infringement)

(Declaratory Relief regarding Defendants U.S. Design Patent Rights)

20.

As explained above, an actual controversy exists between the parties concerning



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the scope and validity of the D537 Patent in that Defendant has alleged Plaintiff is infringing his

patent rights and has demanded royalties for Plaintiffs alleged infringement.

21. As to the actual controversy regarding the scope of the D537 Patent, Defendant

has created an actual controversy by representing that as to the D537 Patent: The design has been

deemed protectable by the PTO even though it is for a useful article of manufacture, as is the case

for any other design patent. See Exhibit C.

22. Thus there is a controversy as to the protectable features of the D537 Patent.

23. As to the actual controversy regarding the scope of the D537 Patent, Defendants

position of infringement would render the D537 Patent invalid as Defendant is attempting to claim

patent protection for features beyond the scope of the D537 Patent. In other words, the manner

in which the Defendant is asserting its patent rights, being dictated primarily to the functionality

of the article, presents an interpretation of the D537 Patent that is not proper statutory subject

matter under 35 U.S.C. 171.

24. Second, as to the actual controversy regarding the scope of the D537 Patent

Defendants position of infringement raises the issue of whether the D537 Patent, as being

asserted, meets the requirements of patentability under 35 U.S.C. 171.

25. Third, as to the actual controversy regarding the scope of the D537 Patent

Defendants position of infringement raises the issue of whether the D537 Patent meets the

requirement of using a broken line disclosure to represent the utilitarian features contained therein

In other words, Defendants position raises the issue of whether functional structure was intended

to be part of the claimed design such that a broken line disclosure should have been used to explain

to the Patent and Trademark Office what was intended by the Defendant to be part of the claimed

design. Thus, the controversy is ripe.

SECOND COUNT

(Tortious Interference with Prospective Economic Advantage)

26. Plaintiff Chen repeats, re-alleges, and incorporates by reference each and every

previous allegation.



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LP

27. Plaintiff designed a travel organizer, named TUO.

28. Plaintiff has economic relationships and existing plans to develop her Origami

Unicorn business and launched a Kickstarter campaign to provide the necessary financing to allow

her business to proceed. Such economic relationships contain the probability and expectation of

current and future economic benefits to Plaintiff, which relationships and expectations are and at

all time have been known to Defendant as shown by the fact that Defendants August 10, 2015

letter specifically references the Plaintiffs Kickstarter campaign, at

https://www.kickstarter.com/projects/1257838137/tuo-the-ultimate-travel-undergarment-

organizer. This website shows that the campaign is to be funded on Monday, August 24, 2015.

29.

Defendants August 10, 2015 letter set a five (5) business day deadline for Plaintiff

to pay or cease her activitiesa deadline selected to affect the Plaintiffs Kickstarter campaign.

Defendant set this deadline to scare off the Plaintiff from pursuing her financing to develop her

Origami Unicorn business. These tactics included threats of enhanced damages under 35 U.S.C

284, pre-tax profits under 35 U.S.C. 289; and all costs of legal action including attorney fees.

30. Defendants intent was to stop Plaintiff from transacting business with the

investors in her Kickstarter campaign, and to otherwise disrupt Plaintiff from developing her

Origami Unicorn business.

31. Defendants intent was for Plaintiff to lose funding, credibility, and customers for

her Origami Unicorn business because of the acts of Defendant.

32.

As a direct and proximate result of Defendants tortious interference, Plaintiff has

suffered and continues to suffer great and irreparable injury, for which the Plaintiff has no adequate

remedy at law.

PRAYER FOR RELIEF

Wherefore, Plaintiff prays for relief as follows:

1. A declaration that Plaintiff is not infringing and has not infringed, either directly or

indirectly, any valid design covered by U.S. Design Patent D720,537;

2. A declaration that U.S. Design Patent D720,537 is invalid;



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LP

3. An award to Plaintiff of her costs, expenses, and attorneys fees pursuant to 35

U.S.C. 285 and all other applicable statutes, rules, and common laws;

4. An Order that Defendant has tortuously interfered with Plaintiffs business;

5.

An award for damages, costs and attorneys fees to Plaintiff consistent with an

Order that Defendant has tortuously interfered with Plaintiffs business; and,

6. An award to Plaintiff of such other relief as this Court may deem just and proper.

Dated: August 20, 2015 Respectfully submitted,

DOYLE LOW LLP

By:/s/ Jaime B. HerrenJaime B. HerrenAttorneys for Plaintiff

Yung Tseng Chendba Origami Unicorn

DEMAND FOR JURY TRIAL

Dated: August 20, 2015 Respectfully submitted,

DOYLE LOW LLP

By:/s/ Jaime B. HerrenJaime B. HerrenAttorneys for Plaintiff

Yung Tseng Chendba Origami Unicorn



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EXHIBIT A TO THE COMPLAINT

Chen v. Taller COMPLAINT EXHIBIT PAGE 8

Case3:15-cv-03821-SK Document1-1 Filed08/20/15 Page1 of 29


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( 7 4 ) A t t o r n e y , A g e n t , or Firm

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CLAIM

The

o r n a m e n t a l

d e s i g n

f o r a r o l l up c l o t h i n g o r g a n i z e r , a s

shown

and

d e s c r i b e d .

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References Cited

2010/0155266 A1 6/2010 Nicholson . . . . . . . . . . . . . . . . . . . . . . 2 0 6 / 6 . 1

2013/0256159 A1 1 0/201 3

Walsh

. . . . . . . . . . . . . . . . . . . . . . . . . . .. 206/61

US. PATENT

DOCUMENTS 2 0 1 4 / 0 1 5 8 5 6 4

A1 6 / 2 0 1 4 B l a s i n g a m e

2006 /0 2600 46

A1 11/ 2006

Landay . . . . . . . . . . . . . . . . . . . . . . . . . 5/413R

2009/0127045

A1

5/2009 Williams

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*

Cited by

examiner




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2 0 1 5

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2 0 1 5

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6

0 f 7

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F I G . 7




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2 0 1 5

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EXHIBIT B TO THE COMPLAINT




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ORIGAMI UNICORN BRINGS THE ULTIMATE TRAVEL ORGANIZER TO KICKSTARTER

Press Releas

Date: 07 / 10 / 201

Company: Origami Unicor

Contact: Connie Che

Telephone: 1-415-715-906

Email: [email protected]

website: www.origamiunicorn.u

The new TUO travel organizer proves that it is possibleto pack better

July 2015 On average, only half of travelers unpack thei

luggage at a hotel while on vacation or a business trip

causing clothing and small items to become unorganized as

they are rifled through each morning. Personal items like

undergarments can quickly disappear among the chaos

resulting in stress and delays. The new TUO ultimate trave

undergarment organizer will allow travelers to organize thei

undergarments or small items neatly in a foldable bag which

acts as a portable closet for their trip.

Launching on Kickstarter in mid-July 2015, the TUO is mad

of a water resistant nylon fabric and features three see-

through mesh zippered compartments to pack and organize

undergarments, accessories and small clothing items

together. Its compact design helps save space in the

suitcase, unfolds and features a detachable handle to hang

from the closet or towel bar to access items easily. There

are also two sets of internal pockets to increase privacy an

separation of smaller items and a mini dirty laundry bag wit

two pockets to help sort items as needed. When travelers

are ready to leave the hotel, they simply need to fold the ba

in thirds, snap the side buttons, and theyre ready to go

The TUO is an ideal solution when a family or a couple are

sharing a suitcase to keep small clothing items organized as

well as perfect for showering in a gym or spa locker room as

it can be secured to the shower bar and keep clothing items

dry and off the floor. In addition, it can help save the embar

rassment of undergarments falling out of the suitcase in

airport security or customs.

Packing for a vacation or business trip can be extremely

stressful trying to organize essential items and optimizing luggage space without exceeding airline luggage weight or siz

restrictions, said Connie Chen, the designer and founder of Origami Unicorn. I designed the TUO to be lightweight and

allow travelers to keep small items organized throughout their vacation or business trip with minimal effort.



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The Kickstarter campaign hopes to raise an initial funding goal of $15,000 USD and will offer Early Bird specials as well aseveral stretch goals after the initial funding goal is met. During the 35-day campaign, pledgers will have the opportunity fund and pre-order items including the TUO and mini laundry bag as well as gift packages in a variety of colors and styleFollowing the Kickstarter campaign, the first TUO organizers for direct consumer sales are expected to be available by Q2015.

ABOUT ORIGAMI UNICORN

Founded by Connie Yung Tseng Chen, Origami Unicorn specializes in design and development of lifestyle products.Chen has a strong background in designing consumer and medical products and has taken her passion for sewing anddesigning soft goods to create the TUO as her first Origami Unicorn product line. For more information, visitwww.origamiunicorn.us

# # #



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TUO Travel Undergarment Organizer design and features

Water resistant nylon fabric Three mesh zipper pockets easy content visibility

Two sets of internal pockets - provide separatecompartments for smaller items

Snap button to keep the bag closed



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TUO Travel Undergarment Organizer design and features

Firm structure and detachable handle design -for more hanging options

Graphic print design

Mini laundry bag with divider Includes one mini laundry bag



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Connie Yung Tseng Chen is a Taiwanese award winning industrial designer based in San Francisco. She started herIndustrial design career in the tech industry, working for large corporations in Taiwan before moving to the bay Area in2005. Prior to her move to San Francisco she developed the desire to explore different culture and lifestyle, and went on trip to Canada, British Columbia that lasted 7 months.

She then joined a program held by the Taipei Design Center to experience the design process in renowned design studioacross the USA, joined One & Co (now HTC) during the TDC program and decided to stay in San Francisco.

For almost 10 years she worked as a senior Industrial designer on medical devices and consumer products such asPacific Biosciences DNA Sequencer, Cutera Laser systems, Etymotic headset at Zoe Design.

Connie has always been passionate about designing and creating soft goods. In 2014 she decided to turn her passion ina job, and started developing a line of products to improve everyday life. Tuo is the first one.

The travel organizer idea came to her while she was going on a trip to France. She made a prototype to put all her undergarments together. The first prototype worked well and was fully functional but left a lot of room for improvement. Shestarted to iterate on the original concept and interviewed friends for feedback. After spending months perfecting theproduct, she finally created the finished look of TUO.

Now she is the founder and designer at Origami Unicorn. She believes design and quality are the best ways to build a

brand. After years of working in the industrial design field, she is finally pursuing a lifelong dream to launch her own brand



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EXHIBIT C TO THE COMPLAINT




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LAW OFFICE OF MICHAEL J. SULLIVAN111 N. MARKET ST., SUITE 300, SAN JOSE, CA 95113

TEL: (408) 6288882 FAX: (408) 6251148

August 10, 2015

Yung Tseng ChenOrigami Unicorn

San Francisco, CA

Re: Infringement of United States Patent D720,537

Dear Ms. Chen:

I am a patent attorney representing Benjamin Taller, the owner of Rolo Travel (Rolo), which

sells a travel accessory protected by United States Patent D720,537 (the D720 patent).

Your webpages for your product, TUO: The Ultimate Travel Undergarment Organizer (the

bag), seen at https://www.kickstarter.com/projects/1257838137/tuo-the-ultimate-travel-

undergarment-organizer and at http://www.origamiunicorn.us, show a bag that is substantiallyidentical to the product sold by Rolo at http://www.rolotravel.com that is protected by the D720

patent.

To infringe the D720 patent, it does not matter whether your bag is exactly identical to the

design in the D720 patent. It also does not matter whether you came up with the bag

independently or simply copied it from Rolos design. Rolos D720 patent will protect Rolos

design from any similar designs regardless of minor design differences or how the infringingdesign was created.

By offering to sell a bag substantially identical to Rolos patented design, you are alreadyinjuring Rolos business. Rolo must protect its business. By hiring me as its attorney, Rolo is

committed to pursuing this matter until you obtain a license to their patent or cease selling your

infringing bag. We are willing to offer you a license to the D720 patent at a reasonable royaltyrate and strongly encourage you to contact us immediately to obtain a license.

If you promptly cease offering to sell the bag or obtain a license to the D720 patent, we will not

pursue litigation against you or seek monetary damages.

If you continue offering to sell the bag without a license, we will sue you and seek the following:

1. Injunctive relief barring you from continuing to sell and offer to sell the infringing bag;2. The greater of enhanced damages under 35 U.S.C. 284 or your pre-tax profits under 35

U.S.C. 289; and3. All costs of legal action against you, including attorney fees.

Please respond by letter within five (5) business days indicating that you have ceased offering to

sell the bag or will agree to license the D720 patent.




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Sincerely,

Michael Sullivan, Esq.




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EXHIBIT D TO THE COMPLAINT




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DOYLE LOW LLP

AT T O R NE Y S AT LAW

[email protected] DIRECT

3640MT.DIABLO BOULEVARD,SUITE 202 505SANSOME STREET,SUITE 1475LAFAYETTE ,CA 94549 SAN FRANCISCO,CA 94111

925.295.1800PHONE WWW.DOYLELOW.COM 925.298.5944FACSIMILE

Via E-Mail

August 17, 2015

Michael SullivanLaw Office of Michael J. Sullivan111 N. Market St., Suite 300San Jose, CA 95113Telephone: (408)628-8882Facsimile: (408)[email protected]

Re: U.S. Design Patent D720,537

Dear Mr. Sullivan:

We have been contacted by the owners of Origami Unicorn and asked to review your letter toMs. Chen dated August 10, 2015.

We have reviewed Rolo Travels patent, United States Design Patent D720,537 (the 537

Patent), which is directed to a roll-up clothing organizer. It is our clients intent to avoid anyprotections provided by the 537 Patent. Thus we also reviewed your clients website which

discusses its invention as follows:

YOUR SUITCASE JUST SHRUNK.

Rolo is a lot of things: compression bag, suitcase, wardrobe, organizer but most of all,its a brand new way of packing.

This clever invention maximizes space with four mesh compartmentstwo large and twosmallthat hold up to four days worth of clothing and toiletries. Simply put your stuff

into Rolos compartments, roll it up, buckle it, and youre on your way.

Made with strong fabric, brand name YKK zippers, military grade mesh, and patented

side-release buckles, Rolo is built to last. It comes with a convenient shoulder strap thats

perfect for hiking, camping, or backpacking and even short trips. (Heck, you may noteven need a suitcase.)

When you arrive, simply unroll it and hang it up in a closet, on a tree branch, or

wherever. Its easy to seeand accesswhats in each pocket. Theres no need tounpack.




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DOYLE LOW LLP

Michael

Sullivan

August17,2015

Page

2

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2

The idea for Rolo came to Founders Benjamin Taller and Cheryl Mascari while

backpacking through Europe. Unpacking and packing their bag constantly was a pain.

They thought, Wouldnt it be great to simply roll all our stuff together?

That epiphany became Rolo. Carry less, travel smarter, and enjoy yourself more when

youre away.

We are having trouble distinguishing the ornamental features of the 537 Patent, for which adesign patent provides protections, from the utilitarian aspects that are described above on your

clients website.

Please get back to us and help us to understand the ornamental features embodying the patented

design that you believe are being infringed by our clients product, TUO.

We appreciate your assistance in finding a prompt resolution to this matter.

Very truly yours,

DOYLELOWLLP

Jaime B. Herren




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TEL: (408) 6288882 FAX: (408) 6251148

August 18, 2015

Jaime B. HerrenDoyle Low LLP

3640 Mt. Diablo Blvd., Ste. 202

Lafayette, CA 94549

Re: Origami Unicorn Infringement of United States Patent D720,537

Dear Ms. Herren:

This letter is a reply to your letter dated August 17, 2015 Re: U.S. Design Patent D720,537 (the

D537 patent).

I am not sure why your main response to our letter is to quote my clients website and then askus to distinguish the ornamental from the utilitarian aspects of my clients product. My clientsproduct and website description are irrelevant to whether your client is infringing the D537

patent. It is also irrelevant whether you are having trouble distinguishing the ornamental

features of the D537 Patent, for which a design patent provides protections, from the utilitarianaspects that are described above on your clients website. The design has been deemed

protectable by the PTO even though it is for a useful article of manufacture, as is the case for any

other design patent.

As far as the visual similarities between the D537 patent and your clients product, we have

impartial third parties who consider the designs to be very similar, and we believe any judge orjury would find the same.

Given this round of correspondence between counsel, we are willing to extend by one day until

Thursday, August 20 our deadline for notifying us whether your client intends to pay a 10%

royalty to license the D537 patent.

Sincerely,





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DOYLE LOW LLP

AT T O R NE Y S AT LAW

[email protected] DIRECT

3640MT.DIABLO BOULEVARD,SUITE 202 505SANSOME STREET,SUITE 1475LAFAYETTE ,CA 94549 SAN FRANCISCO,CA 94111

925.295.1800PHONE WWW.DOYLELOW.COM 925.298.5944FACSIMILE

Via E-mail

August 19, 2015

Michael SullivanLaw Office of Michael J. Sullivan111 N. Market St., Suite 300San Jose, CA 95113Telephone: (408)628-8882Facsimile: (408)[email protected]

Re: U.S. Design Patent D720,537

Dear Mr. Sullivan:

We have your letter dated August 18, 2015, and the first thing we did was to review your websiteto see your background as your summary of the relevant law and the scope of a protection

attributed to a design patent is incorrect. We confirmed that you in fact represent yourself as

filing design patent applications, so you clearly are aware of the appropriate legal standards. In

an abundance of caution, and to confirm that my understanding of the law, I then went to theUnited States Patent and Trademark Office website and found the following clarifications as to

the positions in your letter.

You state The design has been deemed protectable by the PTO even though it is for a useful articleof manufacture, as is the case for any other design patent. That statement is incorrect. The

protection provided by a design patent is just that, limited to a design. As you know, a design

consists of the visual ornamental characteristics embodied in, or applied to, an article ofmanufacture. It does not protect a useful 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 anarticle, 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. Again,

it does not protect a useful article of manufacture.

In the situation in which an article of manufacture possesses both functional and ornamental

characteristics, a design patent protects only the appearance of the article and not structural or

utilitarian features.




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DOYLE LOW LLP

Michael

Sullivan

August19,2015

Page

2

of

3

That is the difference between design and utility patents. In general terms, a utility patent

protects the way an article is used and works (35 U.S.C. 101), while a design patent protects

the way an article looks (35 U.S.C. 171). Both design and utility patents may be obtained on asingle article if invention resides both in its utility and ornamental appearance. That is because

utility and design patents afford legally distinct protections.

In fact, the manner in which you define your clients rights, being dictated primarily by the

function of the article and not its ornamentality, is not proper statutory subject matter under 35U.S.C. 171. Specifically, if at the time the design was created, there was no unique or

distinctive shape or appearance to the article that was not dictated by the function that it

performs, then the design lacks ornamentality and is not proper subject matter.

In addition, 35 U.S.C. 171 requires that a design must be original. Clearly a design that

simulates a well-known or naturally occurring object or person is not original as required by the

statute. A quick review through an internet search engine reveals hundreds of similar type

products.

Finally, the 537 Patent appears violative of the statute in that a broken line disclosure issupposed to be used in the drawings of a design patent to represent the utilitarian features. In

other words, structure that is not part of the claimed design, but is considered necessary to show

the environment in which the design is used, should be represented in the drawing by brokenlines. This includes any portion of an article in which the design is embodied or applied that is

not considered part of the claimed design. When the claim is directed to just surfaceornamentation for an article, the article in which it is embodied must be shown in broken lines.

Your client has not perfected its prosecution in this manner, contrary to the position you have

taken in your letter. Your clients position invalidates its patent.

Once again, we are having trouble distinguishing the ornamental features of the 537 Patent, for

which a design patent provides protections, from the utilitarian aspects which are described onyour clients website and are referenced in your letter.

Please get back to us and help us to understand the ornamental features embodying the patented

design that you believe are being infringed by our clients product, TUO. My client has every

intention of respecting your clients properly issued design patent rights.




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DOYLE LOW LLP

Michael

Sullivan

August19,2015

Page

3

of

3

We appreciate your assistance in finding a prompt resolution to this matter.

Very truly yours,

DOYLELOWLLP

Jaime B. Herren




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TEL: (408) 6288882 FAX: (408) 6251148

August 19, 2015

Jaime B. HerrenDoyle Low LLP

3640 Mt. Diablo Blvd., Ste. 202

Lafayette, CA 94549

Re: Origami Unicorn Infringement of United States Patent D720,537

Dear Ms. Herren:

This letter is a reply to your letter dated August 19, 2015 Re: U.S. Design Patent D720,537.

As the quoted language in your second paragraph states, I said that the design [is] protectableeven though it is for a useful article of manufacture. I did not say that the useful article of

manufacture is itself protectable or that any functionality of my clients product was protected bythe design patent.

Thank you for stating that you checked my background as a patent attorney and for your

extended exposition on the law. Our deadline is unchanged. If this is how your firm seeks to

avoid litigation for your clients, it is not working.

Sincerely,





35/37

From: Richard P. Doyle, Jr. [email protected]: Re: United States Design Patent D720,537

Date: August 19, 2015 at 4:00 PMTo: Michael Sullivan [email protected]: Jaime [email protected], Francois Laine [email protected]

Michael,

I am on this email chain. It was me who asked Jaime to follow up with you and to determine what was ornamental as opposed to

functional. For example, a strap would generally be considered functional. Zippers to seal compartments likewise functional, andfinally the two snaps which lock the fabric in rolled up fashion would also be considered functional. We are missing something andwould appreciate your assistance so that we can best advise our client.

Thank you

Rich

Richard P. Doyle, Jr., DOYLE LOW LLP

3640 Mt. Diablo Boulevard, Lafayette, CA 94549

Three Embarcadero Center, Suite 460, San Francisco, CA 94111

925.295.1805 direct,www.doylelow.com

NOTICE: This E-mail (including attachments) is covered by the Electronic Communications Privacy Act, 18 U.S.C. 2510-2521, isconfidential and may contain attorney-client materials and/or attorney work product, legally privileged and protected from disclosure. This e-mail is intended only for the addressee named above. If you are not the intended recipient, you are hereby notified that any retention,dissemination, distribution, or copying of this communication is strictly prohibited. Please reply to the sender that you have received themessage in error, then delete it and any and all copies of it.


mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]


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From: Michael Sullivan [email protected]: RE: United States Design Patent D720,537

Date: August 19, 2015 at 5:47 PMTo: Richard P. Doyle, Jr. [email protected]: Jaime [email protected], Francois Laine [email protected]

Rich,

I am operating under instructions from my client, who is very interested in either quickly reachinga licensing deal or filing suit to show we mean business. He reasonably believes that he beingharmed by every additional day your client offers her product for sale.Any back-and-forth about what is covered by the patent and whether your clients productinfringes it is, in my clients opinion, just going to delay the resolution of this matter. To theextent we are required to share our understanding of the patent and its infringement as part of thenormal pre-trial process, we will do that. However, we see no benefit in doing that now.Regards,Michael

___________________________Law Office of Michael J. Sullivan111 N. Market St., Ste. 300San Jose, CA 95113(408) 628-8882www.mikesullivanlaw.com

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(SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)

(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)

(Firm Name, Address, and Telephone Number) (If Known)

(Place an X in One Box Only) (Place an X in One Box for(For Diversity Cases Only) and One Box for Defendant

(U.S. Government Not a Party) or

and

(Indicate Citizenship of Parties in Item III)

(Place an X in One Box Only)

(Place an X in One Box Only)

(specify)

(Do not cite jurisdictional statutes unless diversity)

Yung Tseng Chen, an individual, dba as Origami Unicorn

San Francisco

Jaime B. Herren and Richard P. Doyle, Jr.DOYLE LOW LLP3640 Mt. Diablo Blvd., Ste. 202, Lafayette,CA 94549

Benjamin Taller, an individual

Alameda

Michael J. SullivanLaw Office of Michael J. Sullivan111 N. Market St. Ste. 300, San Jose, CA 95113

28 U.S.C. S 2201-2202; 35 U.S.C. 1 et seq.

Declaratory Judgment for non-infringment of design patent and patent invalidity; and Tortious Interference


Documents

Chen v. Taller - Complaint