Carani on Design Patent Infringement

Christopher Carani is one of the leading design patent practitioners in the US. His recent ManagingIP article highlights the design patent elements of Apple v. Samsung and other famous design patent cases in order to tease out some methodology for knowing which design patents are likely to be infringed. The four-page article offers a concise design patent infringement primer.

Carani writes:

Indeed, even if well-versed in design patent jurisprudence, one of the most difficult questions an intellectual property practitioner can be asked is whether a given product infringes a design patent. Like it or not, there is an inherent subjective component to the design patent infringement analysis that is often unnerving to seasoned pros and novices alike.

One of the few guiding lights to aid practitioners through these murky waters is a firm grasp of the patented and accused designs implicated in, and the holdings of, past decisions. It is only through this type of empirical study and ocular inspection that one can get a feel for the central question of "how close is too close" for design patent infringement. To that end, set forth below is a visual comparison of exemplary cases where there were findings of infringement, and in others non-infringement.

I've posted the article (with permission) here: Download Carani.apple .

24 thoughts on “Carani on Design Patent Infringement

  1. Dear Mr Mauro, thanks for your comment above. Below I copy what I already wrote above, about the parallel UK case, in which the heart of the bench trial was the cross-examination of the opposing sides’ respective experts on design. I wonder, in your opinion, did the opposing parties use the wrong people as their experts on design:

    “Here is the parallel decision in the UK, all 191 paragraphs of it, finding that the Samsung products do NOT infringe the pan-European Apple design patents:

    link to bailii.org

    How’s that for a roadmap of how to decide step by step whether there is infringement of a registered design right?

  2. Sorry to come late to the party with this post.

    Chris makes a good case for more rigor in design patents. However, the issues now go beyond merely legal precedent. Recent advances in cognitive science have dramatically improved our understanding of design patents related to shape perception and questions of infringement. On the other hand attorneys and for that matter many design experts have made almost no use of this new research to bring a measure of science to the ordinary observer test.

    Specifically, in the Apple v. Samsung matter, Samsung gave Apple a free-pass on design patent infringement opinions and expert testimony by failing to employ a significant body of science on shape perception that could have potentially led to a more informed jury and bench.

    The point is that there is now a new body of cognitive science which along with better adherence to legal issues that will result in better design infringement decisions. The ultimate impact will be higher asset value for design patents which have in the past been far to subjective to be of value in the larger corporate view.

    Charles L Mauro CHFP
    President
    MauroNewMedia

  3. You are one of my favorite authors on medical law issues. This article is not the best your work, but I will surely read next one. By the way, you can publish your articles in the directory of medical law articles link to attorney-online.info on Attorney Online. Moreover, there is an Attorney Directory and every lawyer can submit contacts there absolutely free. I think, your friends who provide legal services will appreciate it!

  4. I agree with you Flann, as a retired design patent examiner I’m keenly aware of the time and effort as well as the expense to produce a commercially successful design.

    Have you considered relying on chapter 1500 of the MPEP directed to Design Patents as a potential textbook source. It contains a wealth of information about design patent law as well as examination practice and procedure. Also, “A Guide to filing a Design Patent Application” which can also be accessed on the USPTO web site is a handy user friendly guide that describes the process of filing a design patent application. Hope this information is helpful. There are some other resources that I could direct you to if your interested.

  5. I concur with Mr. Fox, long before other practitioners took design patents seriously Perry had the courage and conviction to start a practice strictly based on design filings, whether it be a design patent, trademark or copyright. I’ve known Perry for over 25 years and first met him when I was a design patent examiner. Over the years as a supervisor and practice specialist I had some lively discussions with Perry and one thing is for sure, he likes to push the envelope, and I commend him for that. Perry has beeen a trail blazer for design patent practice and every practitioner out there who has filed a design patent application or litigated a design patent owes a debt of gratitude to him. As I’ve told him before keep up the good fight for design patents.

  6. Mr. Morgan, if there’s one thing I can say about design patents, as a retired design patent examiner, supervisor and practice specialist, subjectivity is the nature of the beast when it comes to the infringement and obviousness analysis. When the determination is a visual one, as in design patents, it all comes down to the eyes of the individual making that decision, hence the subjectivity. I made design patentability determinations thousands and thousands of times and I can tell you the only way to become comfortable with making such subjective decisions is to do it over and over again relying on the most relevant case law as your guidance.

    As to the proper test for obviousness under 35 U.S.C. 103 in design patents, from the 1981 CCPA decision of In re Nalbandian until the dicta in the CAFC decision of International Seaway Trading Corp. v. Walgreens Corp. the proper standard has consistently been “a designer of ordinary skill in the art”. That is consistent with utility patent practice and is the test that I used when rejecting the claim in a design patent application throughout my entire career at the USPTO.

    I’m not exactly sure why design patent examiners are not giving more obviousness rejections under 35 U.S.C. 103, but one of the trends I noticed in my capacity as the practice specialist for the Design Patent Technology Center when performing in-process-reviews of all design patent examiners was a lack of publication searches. Throughout my years as a design patent examiner in most instances the best prior art I found when examining an application would come from publications. The majority of rejections I gave based on obviousness under 35 U.S.C. 103 were over publication references.

  7. Nice comment there Flann. Only 8 lines indeed. Amazing.

    I had always thought the point of registering designs is to set up a quick, cheap and effective way to stop the slavish copyists, much quicker and more effective than reliance on copyright law, trademark law or unfair competition law, because of the paucity of credible defences available. It appears to me that nobody in house had grasped that simple logic, until Apple used their design registrations against Samsung.

    What is so piquant about A v S is, of course, that whether or not S are indeed slavishly copying something, it is NOT the subject matter of the Apple design registrations.

  8. Thanks for your point that there should be “an appreciation of the years of practice and unique creative talent that it takes to produce a commercially successful design.” [At least where the design is non-functional and the design causes the commericial success]. But note that this supports my above point as to who the “person having ordinary skill in the art” should be for a proper 103 test for a design patent.

  9. Thanks for posting this. I do hope that the new interest in design patents on the part of patent attorneys is not driven solely by the potential for big damages awards, but also an appreciation of the years of practice and unique creative talent that it takes to produce a commercially successful design.

    I also hope that patent law professors start to take a moment out of the semester to mention design patents – my 1300-page Chisum patent law textbook devoted exactly 8 lines on design patents, and my 3 patent professors scorned them. Tomorrow I start teaching a 3-day 15 hour course at Pratt on design law, and have had to write my own textbook.

    Thanks Dennis for leading the change in academia!

  10. Try reading the article first. If the source has “original” thought and just not restating original ideas from somebody else who has spent most of his life on design patent law. BTW, if you have have any difficulty in advising whether or not your client’s design would infringe a given design patent then just compare the proposed design to the prior art and the patented design. If the proposed design is closer to the patented design than the prior art than you likely have a situation which a good argument can be made that infringement exists. This was original thought from Perry Saidman many years ago.

  11. Dennis,

    I echo the “thanks” of others in bringing Christopher’s article to our attention. Unlike utility patents, design patents are truly more “art” than “science.” Perry Saidman’s articles and seminar presentations were often instructive to me, but I’m pleased there’s another “source” to go to for design issues.

  12. Nice to see the folks on this site finally change their tune on design patents. A great deal of thanks should be given by all of us and our clients to Perry Saidman as he has and continues to be the most intellectual and influencial attorney in developning design patent law jurisprudence.

  13. Paul, wishful thinking on my part, for sure. Here is the parallel decision in the UK, all 191 paragraphs of it, finding that the Samsung products do NOT infringe the pan-European Apple design patents:

    link to bailii.org

    How’s that for a roadmap of how to decide step by step whether there is infringement of a registered design right?

  14. Max, I don’t see either that premise or the conclusion. But it adds to the discussed list of confusions making it dangerous to not take even seemingly obvious design patents more seriously with design-arounds, as Samsung and others have discovered. The position you note that if a patented design is not the “same” that it’s novel is 102 [not 103] consistent with comments in some CAFC cases that design patent “claim” coverage is narrow. But that does not seem to have much practical clairity effect either?

  15. Paul, regardless whether 103 is explicitly addressed or not, judging by the Carani article, if the patented design is not the “same” it’s novel. And if, on top of that, it has its own individual character (as Victor v. Creative puts it “overall effect/impression aesthetically different and distinctive”, well then it passes 103.

    If the PHOSITA is of ordinary skill in appreciating or assessing designs (as you have to do before embarking of any design activity of your own) that is the ordinary observer isn’t it?

  16. This is a excellent short article with illustrations on the unavoidably jury-fickle subject of design patent infringement to an ordinary observer, with the added ambiguity of somehow doing so while considering the prior art in some way, as still required.
    But also Richardson v. Stanly still cited, in 2010, from OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). “We held that ‘[w]here a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.’” Where does that leave “functionality” in design infringement determinations?
    ————-
    Even more desirable would be another good article on what is a proper 103 test for design patents? Especially since AIA IPR’s seem to be an excellent new way to get 103 decisions more seriously considered than the design patent examining group of the PTO* without litigation. At least one CAFC decision seem to be ignoring the fact that that law is the same for design patents, and thus the test of obviousness is “to a person having ordinary skill in the art”, which is a product designer or ornamentor, NOT an ordinary observer.

    *Dennis has previously reported how rarely design patent applications get 103 rejections rather than mere formalities rejections.

  17. Thank you Professor. There are probably a whole bunch of us that need to get up to speed on design patents as a result of the success of Apple. I know I do.

  18. Indeed, thanks. I have two questions for Mr Carani.

    My first is prompted by pan-European design patent law, in which the court deciding on the scope of protection is required to take into account the “degree of freedom” enjoyed by designers. In other words, in a mature and crowded field, the likelihood of broad scope is less than in a virgin field where the field was free for all manner of creative design activity.

    In Mr Carani’s article, I see the closest prior art in each case, but no idea how much design freedom there is. I suspect that might be relevant, for example, in the cited bench trial of the “bench end” case.

    My second question is whether infringement vs validity squeeze arguments are ever-present in design patent litigation, even if not in utility patent cases.

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