Design Patent Litigation

PatentLawPic029In the past twenty years, the US Patent & Trademark Office has issued just over 268,000 design patents. During that time, almost exactly one percent (1%) of those issued design patents have been litigated to some degree. (i.e., at least a complaint was filed asserting infringement of the patent). The most commonly litigated are design patents covering ornamental features of shoes (7% of litigated patents) and lamps (5% of litigated patents). Other commonly litigated products include furniture (chairs & tables), eyeglasses, and golf equipment.

35 USC 171 outlines the scope of design patents as “any new, original, and ornamental design for an article of manufacture.”  The MPEP narrows this definition to only include “visual characteristics” of a design – although a court could force the PTO to include other sensory characteristics.  I suspect a product with ornamental textures – even if not visually distinct — could be protected (especially if the product was designed for blind individuals).  A further (and improbable) stretch would be to define design to include associated music, scent, and taste.

20 thoughts on “Design Patent Litigation

  1. The reason the key blade blank in Best Lock was invalidated for functionality, i.e., was deemed dictated solely by functional considerations, is because there was no other shape, none, that would mate with the corresponding keyway. Offhand, I can imagine many other designs of a wrench socket that would work, e.g., one that had diamond-shaped cutouts on the periphery rather than the claimed oval shaped cutouts; thus, the ’049 design patent is not monopolizing the function of a wrench socket. Even though some aspects of the design are dictated by function, i.e., the dimensions of the inner surfaces that mate with a corresponding nut, it’s the overall design that must be dictated solely by functional considerations in order for the design patent to be invalid based on functionality.

  2. Perry, it is because of Best Lock that I say that the patent is invalid for lack of any ornamental features.

    “Any aesthetic appeal of the key blade design shown in the ’636 patent is the inevitable result of having a
    shape that is dictated solely by functional concerns.”

    It is the same with that socket.

  3. Carson, my man, you are hereby a candidate for the Federal Circuit bench! OF COURSE the illustrated features are functional, i.e., perform a function, because design patents are only granted for articles of manufacture which by definition perform a function. If design patents were not granted for products that performed a function, there would be no design patents. Just because they perform a function (i.e., are de facto functional) does not mean that the designs are de jure functional (i.e., functional as a matter of law). The standard test for determining whether a design is impermissibly de jure functional is whether there are alternate designs that perform substantially the same function. If there are, then the patented design is not impermissibly monopolizing that function, and is thus valid. On the other hand, if the patented design is the only design that will perform that function, it is invalid for being de jure functional. See the Federal Circuit’s Best Lock case for more.

  4. “The ornamental design features of the wrench socket claimed in D550,049 are illustrated quite clearly in FIGS. 1-7″

    There are no features shown in Figs. 1 – 7 that are ornamental. They are all functional.

  5. I often found that “drafting claims” for design patent applications was as difficult as drafting claims for utility patent applications. It is also not unusual to have multiple divisionals/continuations for design patents. In fact, I would even suggest that most designs are not adequately claimed unless you end up with more than one application – either by design (no pun intended) or by necessity (restriction requirement). Similarly, the use of broken lines should be the norm, rather than the exception. Of course I also had the opportunity to learn from Perry Saidman along the way, which might explain some of my views.

  6. Mr. Saidman,

    With all due respect, in the Tanashin Denki v. Thomson Multimedia case that you cited Thomson was found to have willfully infringed Tanashin’s U.S. Patents known as the ’318 patent, the ’224 patent, the ’097 patent, the ’790 patent, and the ’101 patent. Only the ’097 patent is a design patent. The other four are utility patents.

  7. And of course, the drawings can be broad (lotsa broken lines) or narrow (lotsa solid lines). Patent lawyers, having honed their lexicographic skills in drafting utility patent claims, need to translate their wordsmithing skills in to picturesmithing skills, so that the drawings in their design patent applications do not claim either prior art ornamental features or purely functional features or features that will just be too damn easy to design around by either leaving them out or changing them. It’s a mindshift, but let’s face it, shift happens.

  8. Perry Saidman: Owners win contested/litigated design patent cases that have broad, well-drafted claims.

    Of course, the claims for a design patent include the drawings themselves.

  9. >>Are there any statistics on how well the 1% did in litigating? The design patent owners seem to lose in most reported decisions. On the other hand, often the design patent in the reported cases has no dotted lines, and seems to be way narrower than needed to avoid prior art.<<

    You are spot on. Owners win contested/litigated design patent cases that have broad, well-drafted claims; these never make it to a reported decision. The poorly drafted claims get litigated to a decision, and as we’ve seen, can make bad law, which has the deleterious effect of giving design patents a bad name. But just ask counsel for Nike, Motorola, Sony, or Apple if well-drafted design patents are effective in stopping knock-offs.

  10. >>Could the shadow cast by an article of manufacture (a slhouette) be proper 101 subject matter?<<

    The statutory subject matter section of 35 USC for designs is 171 rather than 101. Although questions could be raised by trying to patent the shadow itself, you’d be better off just claiming the profile of the article, assuming that’s what you want to protect.

  11. Are there any statistics on how well the 1% did in litigating? The design patent owners seem to lose in most reported decisions. On the other hand, often the design patent in the reported cases has no dotted lines, and seems to be way narrower than needed to avoid prior art.

  12. Maybe “conventional wisdom” ought to check with Tanashin Denki Co. who in 2001 won a $10.6 million jury verdict against Thomson Multimedia for design patent infringement. The judge doubled the damage award to $21.3 million and added $4.3 million in attorney fees.

  13. Conventional wisdom has that only two classes of people make any money off of design patents: Draftsmen and the USPTO.

  14. The ornamental design features of the wrench socket claimed in D550,049 are illustrated quite clearly in FIGS. 1-7, and the socket is shown positioned in its environment (i.e., in a wrench) in FIG. 8. If you meant to say that you cannot figure out the point of novelty of the patented design that distinguishes it from the prior art, for this you have to compare the wrench socket illustrated in the drawings with the prior art. It would appear, offhand, that perhaps the patentee claimed this design a bit too narrowly, since there are features of the base and inner working face which may well be old, i.e., not novel. The PTO design examiner will not draft your claim for you; if you come in with a picture claim (yes, stretch your metaphorical pinky and thumb), the Examiner will delight in his easy disposal and issue a Notice of Allowance, and you will get a picture claim that will be easy to design around.
    And, yes, one can file a design patent continuation application based on a parent utility application, and vice versa, under section 120 as long as para. 1 of section 112 is satisfied in the parent.

  15. A design patent issued yesterday- D550049. Not only can I not figure out what the ornamental design features are supposed to be, I see that it is a CIP of an abandoned utility application. I did not even know that was possible.

  16. Interesting that the design patent face page you chose to post was one assigned to LA Gear, one of the most notorious athletic shoe knock off companies in the 1985-1993 time frame. See e.g. the Avia v. LA Gear decision by the CAFC. As for the the large number of design patent infringement cases involving shoes, I bet Reebok and its then subsidiary Avia, account for a fair number of them, and a fair number of those cases named LA Gear as a defendant.

    Surface treatment can qualify as subject matter for a design patent and there are even ways to claim a repeating pattern. See e.g. U.S. Patent No. Des. 298,681.

Comments are closed.