Kellogg v. Nike, 2007 WL 4118898 (D. Neb. 2007)
Design patent claim construction usually involves a court examining a series of drawings. When submitting his patent application, Kellogg included a statement that his invention covered a “cap with vents formed along the seams extending radially from the center.” During prosecution, the PTO removed that statement under MPEP 1503.1. In particular, the Examiner found that the “since illustration in the drawing views is its own best description, the statement preceding the claim is not necessary and should be removed.”
Soon after Markman, the Federal Circuit determined that claim construction is also a requirement of design patent litigation. Elmer v. ICC Fabricating (Fed. Cir. 1995). The claim construction process usually involves the judge writing a paragraph describing the “visual impression” created by the drawings. Contessa v. Conagra (Fed. Cir. 2002). As construed, design patent claims should only include non-functional aspects of the design. Durling (Fed. Cir. 1996).
Here, the court described what he saw:
An ornamental design for a vented baseball-styled cap as defined by the overall visual impressions as shown in figures 1 through 4. The cap has a hemispherical cap portion with a brim extending generally from one side of the cap portion. The hemispherical cap portion has four oblong-shaped vents that have sharply narrowing v-shaped ends. The vents are symmetrically shaped and extend along the seams of the panels of the cap in a generally “X”-shaped fashion with the center of the “X” being located at the top center of the cap.
Of course, one problem with this type of claim construction is the difficulty in determining the level of detail. For instance, under this construction, a fitted cap could infringe even though the drawing clearly shows an adjustable cap. On the other side, the required shaping and symmetry is quite detailed. It is also unclear from the claim construction whether the claim is open ended — thus could a cap sporting five vents be infringing?
Notes:
- These questions will be answered in the upcoming Egyptian Goddess en banc appeal.
“Top Ten patent cases of 2008”
I’m interested in the reading the Cert Petition filed by attorney Bender. Can Patently-O (or anybody) post it? Thanks for your help.
Who knew the sleepy field of design patents could incite such an outpouring of comments?!
Those who find design patents useless or worse seem to overestimate the scope of these patents. Design patents are very easily designed around, because the patent only covers the design illustrated in the patent specification. For this reason, they protect the specific design itself, not near-copies — they protect the patentee against counterfeits and copies, but can’t be used to beat up legitimate competitors, or even those who choose to closely mimic the design.
What a design patent prevents is outright copying, with the presumed intent of cashing in on the success of the original design. Given the ease with which one can alter the proportions of the device or the location of the screen and controls, an iPod look-alike that infringes Apple’s design patent could only have been intended to a parasitize Apple’s sales. The law reflects a legislative choice to deter such freeloading, and to thereby encourage innovative design.
A case in point is eMachines’ “eOne” computer (link to answers.com) which was a pretty close knock-off of the original iMac. Although it might confuse a few consumers, it doesn’t infringe Apple’s design patents. Thus, although Apple did sue eMachines for trade dress infringement, they did not sue for infringing the design patent.
The closest analogy, really, is copyright: a design patent does not cover the idea or concept, but is specific to the visual “language” of the design.
“you apparently don’t believe in the “limited time” concept because you think the design patent’s 14 year term should be used to create secondary meaning sufficient to create an unlimited right”
To the contrary, I have written that once a design patent expires, the patented subject matter is in the public domain and may not constitutionally be extracted by someone claiming trade dress rights in the same subject matter (see my “Kan TrafFix Kops…” article at link to designlawgroup.com). This was a core issue in TrafFix (the “right to copy”) that the Supreme Court dodged by relying instead on functionality to douse the trade dress rights. Several courts, however, have recently subscribed to the old “right to copy” view: see “The Right to Copy Doctrine” (link to designlawgroup.com).
“In contrast, design patents are for non-functional appearance, just like trade dress or a trademark. ”
Trade dress and trademark protect the source-identifying function of the mark. In other words, trademark protects an aspect that is separate from the utility/ornamentality protected by patent. Saying trademark extends the design patent right indefinitely confuses the two issues.
Also, patents are covered by Art. I, Sec. 8, whereas trademark is based on the Commerce Clause. I don’t see anything unconstitutional about enjoying benefits granted by two different sections of the Constitution.
“You should have to forfeit trade dress/trademark rights if you get a design patent, otherwise the design patent laws become unconsitutional tools to create rights for an “unlimited time.” ”
What kind of reasoning is this????
“Duh. I was responding to the posters who justified design patents on the basis of counterfeits and poor quality knock-offs — which is a trademark/customer-confusion-based concern.”
Sorry anonymous, we are dealing with a nuance of effect here. The “effect” of a world without design patents would be to allow knock off artists to rip off the shapes of things that might not be as easily protectable under trademark laws or notwithstanding trademark protection might still be protectable under a design patent as a competing avenue of protection and possibly a superior one.
MM please don’t take my silence as acquiescence to your ridiculous assertions. I just can’t decide which part of these incredibly weak arguments I should slice and dice first.
Oh, by the way, I agree that at the end of the day design and utility patents ARE about protecting the inventor and giving businesses incentives. I was just trying to put together a decent “benefit the public” argument to try to shut MM up (I guess we can see THAT is a huge waste of time).
I assume that all of you anti design patent commenters also believe that copyright is an abomination. The copyright statute is also based on Article I, Section 8, clause 8, and therefore must also “promote the Progress of Science and useful Arts.”
If your concept of “useful Arts” is so narrow that it cannot encompass the aesthetic industrial design protected by design patents, then how is it possible that it could include something like the movie, song, or book made purely for entertainment?
Anyone?
“(2) the device’s particular appearance is functional and therefore is not available as trade dress or a trademark”
— that’s the holding of the TrafFix case you cited
“Design patents are not about protecting the public (trademarks are), they are about securing to the inventors a limited time exclusive right.”
Duh. I was responding to the posters who justified design patents on the basis of counterfeits and poor quality knock-offs — which is a trademark/customer-confusion-based concern.
… and, as mentioned above, you apparently don’t believe in the “limited time” concept because you think the design patent’s 14 year term should be used to create secondary meaning sufficient to create an unlimited right.
“You can say this about utility patents, too, no?”
No. Utility patents are for function. You can’t prolong that exclusive right (the exclusive right related to function) by obtaining secondary meaning on the appearance of the useful device because either (1) the device’s particular appearance has nothing to do with function and thus others can come up with other devices that function in the same way; or (2) the device’s particular appearance is functional and therefore is not available as trade dress or a trademark. Thus, the utility patent is for a “limited time” as permitted under the constitution.
In contrast, design patents are for non-functional appearance, just like trade dress or a trademark. If you grant a design patent and then let that patentee obtain secondary meaning in the meantime, that design may become a permanent trademark/trade dress — thus the right is not “limited” but unlimited. You should have to forfeit trade dress/trademark rights if you get a design patent, otherwise the design patent laws become unconsitutional tools to create rights for an “unlimited time.”
What’s good for your design patent clients is not necessarily constitutional or good policy.
Mr Saidman,I was wondering would you speak to this. I have a clever gag gift idea and am sure it would be well received by the public(very cheap to make-allmost pet -rockish in nature).Would trademark or design patent status be the best route to get some kind of protection for introduction? Thank you if you respond.
“Also, design patents shouldn’t be used as a means to buy time until their product shape achieves some sort of secondary meaning for trade dress or trademark status and thus extend the design patent indefinitely. (Some case pointed this out, but it’s cite escapes me.)”
You can say this about utility patents, too, no? This is done all the time, by both utility patents (witness the TrafFix Supreme Court case) and design patents. Design patents are, or at least should be, market entry protection, while it usually takes a longer time to develop secondary meaning. In reality, since design patents take too long to get (e.g., 1-2 years) for many short-lived designs, there is virtually no market entry protection, which is why I’ve been advocating for a new sui generis design registration system, similar to the Community Design system in Europe.
“I’ll take Mooney’s side for once design patents, although sometimes useful, are not necessary to protect the public from knock-offs. Apple is free to mark their goods clearly and unmistakably with their APPLE trademark, which should put the public on notice of what is a genuine Apple product and what isn’t. If, at that time, Apple’s sales slide, so be it because the public is consciously choosing to purchase the knock-off knowing that it isn’t a genuine Apple product. Competition isn’t a bad thing when the consumer isn’t confused.”
Design patents are not about protecting the public (trademarks are), they are about securing to the inventors a limited time exclusive right. The same is true for utility patents – they are not about protecting the public, they are about rewarding the innovators with an opportunity to at least recoup their investment, and perhaps have the exclusive right to profit on sales of the patented invention for a limited time. Utility patent infringement is about theft of technology; design patent infringement is about theft of appearance. The exact same quid pro quo exists for both. One of the reasons most patent attorneys knock design patents is because they are first and foremost technophiles and as dedicated left-brainers really don’t appreciate good design and how it adds a lot to our daily lives, much the same way a good Picasso does.
The fact that you can SEE design patent infringement, and that its theft is so visible, makes it easier to detect and prove (compared to utility patent infringement), and also renders design patents easily confused with trademark/trade dress laws. Design patents are statutory, must be applied for by the actual inventor(s), must be new, original & nonobvious, do not require use in commerce, and expire after 14 years. Trade dress arises in common law only through use in commerce, is owned by the user not by the “inventor”, does not need to be either new, original or nonobvious, and can last forever.
“If someone can knock of the iPod shape for their player, but uses a different (cheaper) metal which changes the whole balance dynamic and electrical characteristic of the player what happens? ”
People won’t buy it. They’ll be Apple’s iPod instead.
Get it? It’s pretty simple, actually. You know most folks who sell things don’t file design patents to cover their designs. They understand that their “investment” in their design is “protected” by the quality of their goods and their reputation.
“one only needs not look far to see examples of how such great designs fell into the public domain and lost their quality and thus their iconic value.”
Name some of these examples, please.
“Allowing knock offs of a shape could, for example, really compromise safety.”
So now design patents are a public safety issue? When I see this kind of desperation, my suspicion that “design patents” exist purely to satisfy a certain subset of users/abusers only grows.
“I’ll tell you. Suddenly, everyone will buy the cheaper inferior version, (naturally) and iPod sales will suffer and eventually the iPod product line could collapse.”
I’ll take Mooney’s side for once design patents, although sometimes useful, are not necessary to protect the public from knock-offs. Apple is free to mark their goods clearly and unmistakably with their APPLE trademark, which should put the public on notice of what is a genuine Apple product and what isn’t. If, at that time, Apple’s sales slide, so be it because the public is consciously choosing to purchase the knock-off knowing that it isn’t a genuine Apple product. Competition isn’t a bad thing when the consumer isn’t confused.
Also, design patents shouldn’t be used as a means to buy time until their product shape achieves some sort of secondary meaning for trade dress or trademark status and thus extend the design patent indefinitely. (Some case pointed this out, but it’s cite escapes me.)
I admire you, CaveMan, for having the patience and time to so aptly respond to MMM. I had drafted a response, but deemed it too much of an ad hominem argument, so decided against posting it.
As Jim Demers said aptly, true intangibly valuable designs are a “hybrid of art and engineering.” The resulting truly “iconic” works such as the iPod design or many others you could name, such as notable chair designs, are undeniably valuable. And one only needs not look far to see examples of how such great designs fell into the public domain and lost their quality and thus their iconic value.
OK MM, How about a design feature that, while not easily susceptible to description in utilitarian terms, nevertheless may have aesthetic features that lend some utilitarian and, yes, possibly some quite innovative utilitarian value. Like the shape of a boat hull or surf board that is merely a particular contour but results in superior performance and waymaking in the water.
As far as your baseless assertion that a protected design adds nothing to society, I can tell you that a world full of knock offs is not good for the public either. Usually, such as in the case of a boat hull, there is much more to it than just a shape. Its the construction process, the materials, the surface treatment, etc. Allowing knock offs of a shape could, for example, really compromise safety.
A knock off economy destroys the incentives for the production of quality products. Just look at the selection of products in Wal Mart. Do you see anything but average quality products? No. Permitting knock offs creates a slouching toward the middle and eventually, with enough momentum, a race to the bottom. Here is an article against knock offs in NPR, hardly a bastion of property rights, its not a sophisticated article, but it shows that even they “get it” when it comes to knock offs.
link to npr.org
Take the iPod example. The iPod design is much more than just a shape. Its a highly polished ingot that is carefully weighted and probably has a certain conductivity, etc., etc.. If someone can knock of the iPod shape for their player, but uses a different (cheaper) metal which changes the whole balance dynamic and electrical characteristic of the player what happens?
I’ll tell you. Suddenly, everyone will buy the cheaper inferior version, (naturally) and iPod sales will suffer and eventually the iPod product line could collapse. Why is that bad you say?
Well let’s say you are a connoisseur of fine music and digital music systems – I know its a stretch of the imagination, but work with me here. You won’t be able to find a superior iPod, because iPods are no longer available due to the availability of cheap and inferior knock offs. You sure as heck can’t find them at Wal Mart, and you can’t find them anywhere. And all the Apple stores were closed last spring.
And that is why design patents are useful to society.
The End
“…who never met a right he liked, especially when he couldn’t understand it, design patents provide some useful protection in specialized areas.”
LOL. Yes, CaveMan, I don’t doubt that design patents *exist*. And I don’t doubt that, simply because they exist, that businesses will use them to beat each other over the heads with.
What I do doubt is any claim that design patents are *needed*. In fact, I’m quite certain that they are NOT needed and that, at the end of the day, they provide precisely zero benefit to the public (or worse).
I’ve already set forth why this is the case: design is advertising. Advertisements and packaging will be utilized by companies to promote their products, regardless of whether they have design patents on their product packaging or not.
Trademark protection exists to protect consumers from being confused.
There is a very simple explanation for the confusion in the “design patent” area. The more that companies wade into this unnecessary swamp to create tools to harass each other with, the more confusing it’s going to get because — at the end of the day — we are talking about granting “patents” for “innovations” that reasonable people understand are not “innovations” at all, in the normal sense of that term.
I’m really sorry if I’m offending the nation’s hardworking bottle and boat hull designers here. That must be one powerful lobby they have to have gotten so many folks here interested in backing them up.
To answer Malcom’s question, design patents can be highly valuable in the battle against look-alike and counterfeit products. A perfect example is Apple Computer’s use of design patents to maintain the exclusivity of their iPod (D516,576) and iMac (D541,799) designs. In products like these, the innovation is a product of industrial design, a hybrid of art and engineering. (The newest iMacs, arguably, merit a place in the Museum of Modern Art.) This is an expensive process, but it provides iconic products that are immediately recognizable as Apple’s, and design patents protect that investment.
That said, the design patent on the baseball cap seems likely to be a “consolation prize” for an inventor who failed to get a utility patent on the vented hat: not well thought-out, and not worth the expense and effort.
The only thing not changing is the ordinary observer test, and maybe thats all we really need.
A markman hearing makes no sense. Claim construction is required by law, BUT the manner presently applied by the Courts is contrary to law. Specifically, the “step” of claim construction cannot be accomplished by use of words. A design “claim” must be construed in the eyes of an ordinary observer. The “act” of claim construction” is implict within the application of the ordinary observer test. The ordinary observer test is applied by comparing the alleged infringing design to the drawings of the claimed design.
To Keith at 11:14 am,
As to filing several variations, don’t forget that design patents must also pass the 103 test of non-obviousness. I have prosecuted some design applications which received 103 rejections based on copending applications for the same client. Note, I said copending rather than related. I don’t really know how you can get related families in design cases; I’ll leave that to experts.
Agree with anon @10:15 and others who have derided the patentee’s poor drawings. This claim should be interpreted much more narrowly.
Strategically, I would add that design patents are so cheap that several variations could have been filed, as well. Differing positions and shapes, different scope, whatever.
In my practice I think of Design patents mainly protecting the patentee from their own suppliers. Protection from their own molds being used by others in this market. Expecting much more than that is a bit of a gamble.
I suppose a good design patent will delay cheap knock-offs, but sophisticated companies should be able to design around most design patents. (Unless they are Nike, apparently.) Sometimes just causing just a bit of worry, re-design, and legal review for your competition is a good return on investment. Is spending $1 so that your competitors all have to spend $5 to follow you into the space worth it? Depends on the market and the margins at play.
Is is it good policy? Don’t know. But I would gladly look into it on an hourly basis . . .
“The district court’s relatively broad claim construction is a breath of fresh air for design patentees[.]”
… but it diminishes, if not kills, the notice function of the claim, which is supposed to be limited by the solid lines.
The patentee was free to put everything in phantom except for the oblong-shaped vents. The patentee was also free to include patentably-indistinct variations of those oblong-shaped vents. But the patentee didn’t and its claim should therefore be narrowed to what it claimed. Period. Design patentees don’t need special help from the courts: they just need better design patents.
Mr. Mazzarese has so well responded to MMM that I feel no need to jump into that particular fray. Getting back to the merits of Kellogg v Nike, and setting aside my longstanding view that claim construction for design patents is an unneccesary waste of judicial resources, the really interesting part of this court’s relatively enlightened claim construction is that it is broad enough to be interpreted to cover Nike’s cap, which arguably has substantially the same vent pattern except that Nike’s vents are not as close to the crown of the cap as in the claimed design. For what it’s worth, Nike’s cap also has an adjustable strap in the back. The district court’s relatively broad claim construction is a breath of fresh air for design patentees, the fate of which, as noted by Dennis, will ultimately be determined by the Federal Circuit’s Egyptian Goddess en banc rehearing.
I think that the invention in these cases is aesthetic in nature, rather than functional, which does not necessarily diminish its potential value to a company. I suppose you can argue about whether aesthetically pleasing equals ‘new and useful’ in the Constitutional sense, but design patents have an important place in many company portfolios — particularly those whose brain trust is a stable of highly skilled and talented designers that can consistently create products that are more visually appealing than their competitors. In such cases, there is frequently little or no functional novelty. And there is often insufficient margin and/or market longevity to justify the cost of pursuing utility patents.
To be sure, if your client is a database technology company or designs wireless networking chip sets, then design patents will take a back seat. But many companies are looking at markets from a different perspective, and the law of industrial designs has a very long, well-established history with global reach.
To Curmudgeon Mooney,
…who never met a right he liked, especially when he couldn’t understand it, design patents provide some useful protection in specialized areas. Bottle shapes and boat hulls to name two important ones come to mind.
That a non-utilitarian design could be protected by trademark, would not prevent a prudent practitioner from advising his or her client that other means, such as design patent protection are available, particularly in view of factual exigencies.
Consider that your client’s competitor successfully registered a sought after design, last month, but failed, possibly because of bad advice like the kind you might tend to give based on your comments above, to get design patent protection for the design. A more insightful counsel advises your client to file for a design patent. Your client files and is granted protection on the design. Guess who could now quite probably be in a superior position.
I’ll give you a hint – it wouldn’t be you.
To Curmudgeon Mooney,
…who never met a right he liked, especially when he couldn’t understand it, design patents provide some useful protection in specialized areas. Bottle shapes and boat hulls to name two important ones come to mind.
That a non-utilitarian design could be protected by trademark, would not prevent a prudent practitioner from advising his or her client that other means, such as design patent protection are available, particularly in view of factual exigencies.
Consider that your client’s competitor successfully registered a sought after design, last month, but failed, possibly because of bad advice like the kind you might tend to give based on your comments above, to get design patent protection for the design. A more insightful counsel advises your client to file for a design patent. Your client files and is granted protection on the design. Guess who could now quite probably be in a superior position.
I’ll give you a hint – it wouldn’t be you.
Malcolm:
Agreed that design patents are not a major part of the engine that drives the economy. I think they have their place, but I also think Dennis’s post shows how limited the protection is. After all, while the latest utility patent is No. 7,305,714, the most recent design patent is No. D556,975 (for plant patents it’s PP 18,288 and Reissue Patent RE 39,936). Having said that, last week more than 500 design patents issued. So someone must think they’re worth having.
Kevin, I sincerely appreciate the history. It’s helpful to understand certain aspects of this area.
But when you write “they are similar in providing for a limited time a commercial advantage for the innovator,” I have to ask again: where is the “innovation” here and what it is it about this “innovation” that warrants the granting of this right?
I’m just not seeing a rational basis for this law. There is no credible benefit to the public that I can see.
I understand marking. But if a design is not distinctive enough to qualify for trademark protection or useful and inventive enough for a patent, then what could possibly be the point of protecting the design for its own sake?
Why should the maker of the above-mentioned hat, for instance, be protected from “knockoffs” by competitors who can make an identically designed hat better or cheaper?
People will continue to manufacture distinctive non-novel and obvious things to stay ahead of their competitors and appear “fresh”. That’s a part of business called ADVERTISING.
These design patents are a waste of public money and resources. I vote to tank them all.
Malcolm:
The answer is that a design application provides protection for the same aspects of a commercial product that trade dress protection does – a design that is associated with a particular product. This is important to protect the innovator who develops a design having aesthetics that will provide a competitive advantage for her products, to prevent (or at least discourage) knockoffs. The difference is that a design patent can be obtained, and protection attach, before the product is first used in commerce. It also permits protection to attach without requiring any of the traditional indicia of trademark, such as association with the innovator’s product in the minds of the relevant consumer.
Design patents may be less important today in view of the availability of “intent-to-use” trademark protection, but Congress did not provide this sort of Federal trademark registration until 1989.
Design patents thus don’t satisfy the “quid pro quo” of disclosure for protection that utility patents do. But they are similar in providing for a limited time a commercial advantage for the innovator.
Hmmm… I am by no means an expert on design patent law, but it seems to me that the adjustable strap is unlikely to be a point of novelty, and I can’t see it having much impact on the ordinary observer test. So does it make any difference whether it’s in the claim construction? I suppose the bigger question is whether claim construction in general makes any difference. Perhaps just to highlight the points of novelty, if any?
I’m with Malcolm – I can’t imagine advising a client to pursue design patent protection, but I’ll admit that I’m probably woefully ignorant in this area. Can anyone cite a recent example of someone successfully enforcing one of these things?
Can someone explain to me what the point is of granting these patents? What exactly is being promoted here because it sure the hell ain’t innovation, nor do I see anything else being achieved that would warrant the granting of an exclusive right to anything.
KLL,
Absolutely on point. It doesn’t look like this district court understands at all how drawings in design patents are to be interpreted.
The adjustable strap is claimed since it isn’t in phantom. The claim construction completely misses it.
Paul,
Couldn’t have said it better myself. Perry Saidman has constantly harped on the use of phantom lines to broaden design claim scope and rightly so.
This and numerous other design patent “claim” scope problems are largely due to failures to use phantom lines instead of solid lines for the parts of the drawing not intended to be claimed.
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