Patently-O Bits & Bytes by Lawrence Higgins

Apple v. Samsung

  • Christopher Carani recently wrote an article about the Apple v. Samsung smartphone war. In the article, Carani provides the facts and background necessary to understand the current design patent dispute and offers insight into the merits along with potential outcomes. For example, Carani writes that Judge "Koh may find that Apple has not met its burden on validity at this stage of the case and deny the motion for preliminary injunction with respect to all patents." The article is a great source for information about the exciting smartphone battle between the top two smartphone makers in the world. [Link]

Spangenberg Family Foundation

  • The Spangenberg Family Foundation gave Case Western University School of Law a $2 million gift to endow the Spangenberg Family Foundation Chair in Law and the Arts. Eric Spangenberg is the founder and chairman of Dallas-based IP Navigation Group, a patent monetization company.

IP Hall of Fame

  • The process to find inductees into the IP Hall of Fame for 2012 is currently underway. The IP Hall of Fame enables the IP community to honor individuals from business, politics, the law, finance, academia and anywhere else, who have made a significant contribution to IP. Any member of the IP community can make a nomination, and all nominations will be considered by the IP Hall of Fame Academy. [Link]

Executive Director

  • The Engelberg Center on Innovation Law and Policy at New York University School of Law is seeking applicants for the full-time position of Executive Director. They seek an Executive Director with an entrepreneurial approach who would be an engaged participant in formulating and implementing an ongoing vision for the Center's programs in competition, innovation, and information law. Specific duties will be determined in consultation with the Center's faculty directors, but should be expected to include: developing a policy-oriented research agenda, preferably in a way that could involve students, fundraising for the Center from industry, foundation, or government sources, and planning conferences and other events (with the help of the center's administrator). More information about the Center and its activities is at [Link].

Applications should be emailed by December 10, 2011, to Nicole Arzt, nicole.arzt@nyu.edu, and should include: a cover letter, curriculum vitae, copies of any publications or other relevant writing, and the names and contact information of three references.

Patent Jobs:

  • Roberts Mlotkowski Safran & Cole is searching for an IP attorney with 2-4 years of patent prosecution experience and a degree in EE. [Link]
  • Roberts Mlotkowski Safran & Cole is seeking an IP attorney with 2-4 years of patent prosecution experience and a chemical or chemical engineering degree. [Link]
  • iRobot is looking for a patent agent with 5-8 years of experience. [Link]
  • Greenblum & Bernstein is seeking a patent associate with an EE or CE background and 2-3 years of experience. [Link]
  • Steptoe & Johnson is searching for IP associates with a minimum 4 years of experience in litigation and a technical background. [Link]
  • Fiala & Weaver is looking for a patent attorney/agent with 1 or more years of experience. [Link]
  • Myers Wolin is seeking a partner level attorney (patent or trademark) or small practice group. [Link]
  • Edell, Shapiro & Finnan is searching for associates with backgrounds in EE or mechanical engineering. [Link]
  • The IP group of Sutherland is seeking a patent agent with 1-3 years of experience and a chemical engineering degree. [Link]

Upcoming Events:

  • The ITC Trial Lawyers Association Annual Meeting will be held on November 9th in Washington D.C. Guest speakers includes Deanna Okun and former Chief Administrative Judge Luckern. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Apple v. Samsung

  • Christopher Carani recently wrote an article about the Apple v. Samsung smartphone war. In the article, Carani provides the facts and background necessary to understand the current design patent dispute and offers insight into the merits along with potential outcomes. For example, Carani writes that Judge "Koh may find that Apple has not met its burden on validity at this stage of the case and deny the motion for preliminary injunction with respect to all patents." The article is a great source for information about the exciting smartphone battle between the top two smartphone makers in the world. [Link]

Spangenberg Family Foundation

  • The Spangenberg Family Foundation gave Case Western University School of Law a $2 million gift to endow the Spangenberg Family Foundation Chair in Law and the Arts. Eric Spangenberg is the founder and chairman of Dallas-based IP Navigation Group, a patent monetization company.

IP Hall of Fame

  • The process to find inductees into the IP Hall of Fame for 2012 is currently underway. The IP Hall of Fame enables the IP community to honor individuals from business, politics, the law, finance, academia and anywhere else, who have made a significant contribution to IP. Any member of the IP community can make a nomination, and all nominations will be considered by the IP Hall of Fame Academy. [Link]

Executive Director

  • The Engelberg Center on Innovation Law and Policy at New York University School of Law is seeking applicants for the full-time position of Executive Director. They seek an Executive Director with an entrepreneurial approach who would be an engaged participant in formulating and implementing an ongoing vision for the Center's programs in competition, innovation, and information law. Specific duties will be determined in consultation with the Center's faculty directors, but should be expected to include: developing a policy-oriented research agenda, preferably in a way that could involve students, fundraising for the Center from industry, foundation, or government sources, and planning conferences and other events (with the help of the center's administrator). More information about the Center and its activities is at [Link].

Applications should be emailed by December 10, 2011, to Nicole Arzt, nicole.arzt@nyu.edu, and should include: a cover letter, curriculum vitae, copies of any publications or other relevant writing, and the names and contact information of three references.

Patent Jobs:

  • Roberts Mlotkowski Safran & Cole is searching for an IP attorney with 2-4 years of patent prosecution experience and a degree in EE. [Link]
  • Roberts Mlotkowski Safran & Cole is seeking an IP attorney with 2-4 years of patent prosecution experience and a chemical or chemical engineering degree. [Link]
  • iRobot is looking for a patent agent with 5-8 years of experience. [Link]
  • Greenblum & Bernstein is seeking a patent associate with an EE or CE background and 2-3 years of experience. [Link]
  • Steptoe & Johnson is searching for IP associates with a minimum 4 years of experience in litigation and a technical background. [Link]
  • Fiala & Weaver is looking for a patent attorney/agent with 1 or more years of experience. [Link]
  • Myers Wolin is seeking a partner level attorney (patent or trademark) or small practice group. [Link]
  • Edell, Shapiro & Finnan is searching for associates with backgrounds in EE or mechanical engineering. [Link]
  • The IP group of Sutherland is seeking a patent agent with 1-3 years of experience and a chemical engineering degree. [Link]

Upcoming Events:

  • The ITC Trial Lawyers Association Annual Meeting will be held on November 9th in Washington D.C. Guest speakers includes Deanna Okun and former Chief Administrative Judge Luckern. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Apple v. Samsung

  • Christopher Carani recently wrote an article about the Apple v. Samsung smartphone war. In the article, Carani provides the facts and background necessary to understand the current design patent dispute and offers insight into the merits along with potential outcomes. For example, Carani writes that Judge "Koh may find that Apple has not met its burden on validity at this stage of the case and deny the motion for preliminary injunction with respect to all patents." The article is a great source for information about the exciting smartphone battle between the top two smartphone makers in the world. [Link]

Spangenberg Family Foundation

  • The Spangenberg Family Foundation gave Case Western University School of Law a $2 million gift to endow the Spangenberg Family Foundation Chair in Law and the Arts. Eric Spangenberg is the founder and chairman of Dallas-based IP Navigation Group, a patent monetization company.

IP Hall of Fame

  • The process to find inductees into the IP Hall of Fame for 2012 is currently underway. The IP Hall of Fame enables the IP community to honor individuals from business, politics, the law, finance, academia and anywhere else, who have made a significant contribution to IP. Any member of the IP community can make a nomination, and all nominations will be considered by the IP Hall of Fame Academy. [Link]

Executive Director

  • The Engelberg Center on Innovation Law and Policy at New York University School of Law is seeking applicants for the full-time position of Executive Director. They seek an Executive Director with an entrepreneurial approach who would be an engaged participant in formulating and implementing an ongoing vision for the Center's programs in competition, innovation, and information law. Specific duties will be determined in consultation with the Center's faculty directors, but should be expected to include: developing a policy-oriented research agenda, preferably in a way that could involve students, fundraising for the Center from industry, foundation, or government sources, and planning conferences and other events (with the help of the center's administrator). More information about the Center and its activities is at [Link].

Applications should be emailed by December 10, 2011, to Nicole Arzt, nicole.arzt@nyu.edu, and should include: a cover letter, curriculum vitae, copies of any publications or other relevant writing, and the names and contact information of three references.

Patent Jobs:

  • Roberts Mlotkowski Safran & Cole is searching for an IP attorney with 2-4 years of patent prosecution experience and a degree in EE. [Link]
  • Roberts Mlotkowski Safran & Cole is seeking an IP attorney with 2-4 years of patent prosecution experience and a chemical or chemical engineering degree. [Link]
  • iRobot is looking for a patent agent with 5-8 years of experience. [Link]
  • Greenblum & Bernstein is seeking a patent associate with an EE or CE background and 2-3 years of experience. [Link]
  • Steptoe & Johnson is searching for IP associates with a minimum 4 years of experience in litigation and a technical background. [Link]
  • Fiala & Weaver is looking for a patent attorney/agent with 1 or more years of experience. [Link]
  • Myers Wolin is seeking a partner level attorney (patent or trademark) or small practice group. [Link]
  • Edell, Shapiro & Finnan is searching for associates with backgrounds in EE or mechanical engineering. [Link]
  • The IP group of Sutherland is seeking a patent agent with 1-3 years of experience and a chemical engineering degree. [Link]

Upcoming Events:

  • The ITC Trial Lawyers Association Annual Meeting will be held on November 9th in Washington D.C. Guest speakers includes Deanna Okun and former Chief Administrative Judge Luckern. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Guest Post: Industrial Designs – the Wonder Weapon for the German Blitzkrieg?

PatLit is part of a family of excellent IPKat blogs created by UK attorney Jeremy Phillips. As you might guess, the website has a European focus, although not exclusively so. In a recent post, Michael Thesen wrote about the ongoing patent litigation between Samsung and Apple – with a focus on a German preliminary injunction based upon a European Design Registration. The following is reproduced with permission.

* * *

IgunA preliminary injunction granted on the request of Apple for preventing the sales of Samsung's Galaxy Pad in most of Germany has recently caused a fairly big swivet in the IP community. This 1st instance case, featuring an industrial design and a defendant citing somewhat flimsy evidence, has even found its way to the hall of fame of "patent wars" in minimum time.

What is surprising from a patent litigator's point of view is how simple this is. How is it possible that a preliminary injunction is granted based on an unexamined right? [DDC Note: Unlike US Design Patents, Europe Design Rights are registered without substantive examination.] 

As everywhere, the decision to grant a preliminary injunction requires a careful balancing of the right owner's interest in preventing damages of irreparable nature and the defendant's interest in a fair procedure. For any kind of protective right, doubts in the validity and doubts in the question of infringement will lead to a refusing decision in order to safely avoid erroneous judgments due to precipitate action. 

In patent matters, even a successfully completed examination procedure is not necessarily sufficient to prove the enforceability with a sufficient degree of certainty (at least in Germany). Rather, additional conditions have to be met. In the case of unexamined utility models, the burden of substantiating the enforceability is at the plaintiff's side, which must produce at least the results of a professional search carried out on the subject-matter of the utility model or a positive decision of an invalidity procedure.

Nothing of this kind can be found in the judgment of the Düsseldorf court – the reason being fairly simple: the validity is legally presumed in Art. 85(1) of the Community Design Regulation (CDR), i.e. the court has to treat the community design as valid. This legal presumption may be challenged by way of a counterclaim. However, this shifts the burden of proof/substantiation to the defendant's side. The applicability of Art. 85(1) CDR to interim relief has been questioned, but is generally accepted as far as the author of this note knows.

In practice, the short time scale of procedures in interim relief, the lack of search possibilities comparable to those available for patents and utility models and an official search result to start with leaves the defendant defenseless. This has a further crucial effect on the question of infringement because the defendant has practically no possibility to substantiate the existing design corpus such that the judge has to presume a high degree of freedom of the designer and thus a large scope of protection (cf. Art 10(2) CDR).

Further, the Hagen District court holds that the damages caused by infringements of industrial designs are more likely to be of irreparable nature as compared to patents because the industrial value of the former lies primarily in its individual character, which would be "diluted" when admitting counterfeits during the procedure of the merits, whereas the value of the patent basically lies in its technical advantages which are, as such, not affected by counterfeits on the market.

In particular in the world of telecommunication patent wars there is one further feature of industrial designs which makes them frightening weapons: they are not essential for standards and, thus, not subject to FRAND agreements. As a matter of course, there is no way to obtain interim relief against a global competitor on the basis of a standard-relevant patent. 

In other words, you need not bother with being fair, reasonable and non-discriminative when using industrial designs.

The result is that industrial designs are tools which are largely underestimated in the portfolio of most of the IP right holders. Design rights are not expensive, powerful, can be enforced rapidly, easy to understand even for less experienced judges or customs officers, not susceptible for translation errors even in China, and deserve a decent fraction of every company's IP budget.

The original post can be found here: http://patlit.blogspot.com/2011/10/industrial-designs-wonder-weapon-for.html

Steve Jobs is listed as a co-inventor of dozens of patents – many of them reflecting the iconic and revolutionary designs associated with Apple. Jobs died today and is already missed.

100611_0204_SteveJobs191 100611_0204_SteveJobs192

100611_0204_SteveJobs193

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100611_0204_SteveJobs195

My first Steve Jobs computer was the Apple II c in 1984.  

600px-Apple_IIc_with_monitor

Design Patents and the Fashion Industry

The chart above shows a histogram of design patent application pendency based on patents issued April-November 2010. The majority of design patents issue within one year of the application filing. When there is a delay in prosecution, it is typically due to informalities in the application submitted. In an earlier study, I found that a very low percentage of design patent applications were ever challenged on novelty or obviousness grounds. For a large entity, a design application and issue fees total to $1,320 (half that for a small-entity).

Fashion Industry: In property law, I teach the case of Cheney Bros. v. Doris Silk Corp. (2nd Cir. 1930). In that 80-year-old case, a silk designer filed suit to stop a free-riding copycat. The appellate court rejected the plea based on the general rule that mere product imitation is not actionable at common law. Rather, a successful plaintiff must have some statutory right to protection – such as a patent or copyright – before copying can be pejorized as counterfeiting. At the time, copyright was not available for fabric designs (it is now) and patents were arguably impractical because of the prosecution cost and invention requirement. For the past eighty-years, the fashion industry has been asking for additional protections. During that time, the potential for copyright and trademark protections have been greatly expanded and enforcement of criminal counterfeiting has increased. However, there are still calls for expanded protection for fashion.

Fashion & Design Patent Rights: Some fashion industry markets have found design patents as valuable. These include eyewear, shoes, handbags, and jewelry. Despite widespread and growing use, fashion industry leaders have continued to push additional forms of protection that are easier to obtain.

The Innovative Design Protection and Piracy Prevention Act (S.3728) was recently passed through the Senate Judiciary Committee. That bill would provide protection for new fashion designs that are unique, distinguishable, non-trivial, and non-utilitarian variation over the prior art. No registration of rights would be required. Rather, protection is automatic for newly publicized clothing, footware, bags, and eyeglass frames. At trial, plaintiff would have the burden of proving rights and infringement. Under the proposed system, rights would persist for three years from the date of publication or first distribution.

A Trademark Justification for Design Patent Rights

I have posted a new draft-article to SSRN entitled A Trademark Justification for Design Patent Rights. The article is currently in the editing process and will hopefully be published later this year in the Harvard Journal of Law & Technology.

As the title suggests, I argue that trademark theory offers the best modern justification for ongoing design patent rights. I suggest that design patents serve as an alternative rule of evidence for trade dress rights and are especially useful when trade dress rights are unavailable (or not yet available).

The Abstract: In a series of cases spanning more than one hundred years, courts and the US patent office have made clear that design patents are not to be justified by a fact that the newly invented ornamental design aids in distinguishing a company's product from those of its competitors. This article reverses that conclusion and argues instead that the trademark-like distinctiveness function that helps eliminate customer confusion is the most compelling policy justification for the continued protection of design patent rights in the US.  In cursory language, a number of courts have suggested that the foundation of design patents policy follows the same incentive-to-create approach of copyright and utility patent law. I tentatively reject this traditional incentive model as unlikely to be important in most situations involving ornamental designs.  Rather, I suggest the better justification for design patent doctrine lies in the notion that design patent rights serve as an alternative rule of evidence for trade dress protection.  However, design patents are not merely a parallel alternative to trade dress.  Rather, the existence of practical differences between the doctrines means that design patents rights are available in situations where trade dress protection is unavailable or uncertain.

This article presents a new set of empirical results to support the theoretical construct that design patents fill a gap in trade dress law protection.  Based on the data, I tentatively reject the oft-stated conventional wisdom that design patents are worthless for many because procurement is too slow, expensive, and difficult.  Rather, based on an analysis of the prosecution history files of a large sample of recently issued design patents, I conclude that the current design patent examination system operates as a de facto registration system.  Notably, more than ninety-eight percent (98%) of the patents in my study were issued without the Patent Office challenging their inventiveness. The dramatic rise in the number of design patents being issued indicates that designers find value in design patent protection, and a study of parallel design patent and trade dress litigation suggests that design patents are serving as a back-up or replacement for trade dress rights.

Notes:

  • Download the article at http://ssrn.com/abstract=1656590 and click on “One-Click Download”.
  • E-mail comments to me dcrouch@patentlyo.com.
  • If you think my conclusions are obvious, it may be because I have been making similar suggestions on Patently-O for the past few years. Or else your standards are too high. :)

Design Patent Rejections

Most utility patent applications are rejected at least once on either anticipation or obviousness.  Design patents are different.

As part of a larger project, I combed through 1049 file histories of design patents that issued in the past 12 months. Of those, 5 were rejected on novelty grounds and 8 on obviousness. This leads to a prior-art-based rejection rate of 1.2% (95% CI range of 0.7% – 2.1%).  The vast majority of the patents (81.6%) were never rejected during prosecution.  The most common rejections are under 35 USC 112 paragraphs 1 and 2.  Typically both paragraphs are asserted simultaneously.

According to the most recent USPTO annual report, design patents had an allowance rate of about 90% during the period FY2005–FY2009 as measured by the percentage of disposals that were allowances.  About half of design patents issued in 2009 were pending for less than one year.

PatentlyO032

These numbers suggest that the US design patent system is operating as a registration system rather than as one based on a true examination.  Along this vein, it is typically easier and cheaper to prosecute a design patent to issuance than to register a product design as trade dress.  To be clear, I support the idea of a design patent registration system. More on that in another post.

Design Law: Protecting Copyrighted Designs

Design Ideas v. Things Remembered, 3:07-cv-03077 (C.D. Ill. Filed March 16, 2007)

Perry Saidman is a frequent contributory to Patently-O — especially when the topic turns to design patent law. In a recent case, his firm used copyright law to protect its client's wire-flower design. The flowers were incorporated into candle holders and other small useful objects.

Although cheap ($35), early copyright registration is important for collecting infringement damages. Registration is also helpful in establishing priority and ownership. In this case, the designer registered early and was awarded $750k for willful infringement.

pic-77.jpg

Notes:

Case: Design Ideas, Ltd., v. Things Remembered, Inc., Case No. 3:07-cv-03077 (C.D. Ill. Filed March 16, 2007) (Garfield Goodrum served as lead attorney for the plaintiffs).

Jury Verdict Form: 2000005312.pdf

The original complaint also included charges of trademark and utility patent infringement. The broadest claimof the utility patent (No. 6,398,058) includes a limitation that "loops formed to simulate a flower" are used to connect the base to the top:

1. A container constructed of metal wires, comprising:

   a base including a lower support wire bent to establish the predominant shape of said base;

   a top including an upper support wire bent to establish the predominant shape of said top;

   a plurality of wire figures, each of said wire figures having a first wire forming a central body and a second wire forming a plurality of loops outwardly extending from the central body and circumferentially offset from one another, said central body and said plurality of loops formed to simulate a flower, wherein said first wire and said second wire are separately formed and coupled together; and

   a sidewall connecting said lower support wire and said upper support wire to space said lower support wire from said upper support wire, said sidewall comprising said plurality of said wire figures.

Design Patents: Mueller & Brean

Professor Janice Mueller & Daniel Brean have posted a new working-draft article on design patent protection. The article argues "that courts and the USPTO have previously unrecognized flexibility in how they apply the nonobviousness requirement to designs." The authors recommend, inter alia, that courts (1) recognize that nonobviousness jurisprudence (e.g., KSR) has "very limited, if any, applicability to design patentability"; (2) plant patent patentability requirements serve as a better example; (3) the perspective of a non-expert ordinary observer should be used when considering nonobviousness; and (4) design anticipation should be limited to "strict identity situations."

Read the article here.

Design Patents: Functionality and a Trade Dress Gap Filler

Bissell Homecare v. Wildwood Industries (W.D. Mich. 2009)

This case is not likely to move much beyond the pleadings because the accused infringer (Wildwood) has declared bankruptcy. Wildwood sells replacement filters for Bissell vacuums. Earlier this year, Bissell sued Wildwood for infringement of its design patent (D565818) as well as trademark infringement for advertising “Bissell style” filters. [Link]. Of course, the validity of this design patent is questionable because the shape appears to be almost completely dictated by a need for the removable filter to fit within the standard compartment. “[I]t has long been settled that when a configuration is the result of functional considerations only, the resulting design is not patentable as an ornamental design for the simple reason that it is not “ornamental” – was not created for the purpose of ornamenting. In re Carletti, 328 F.2d 1020 (C.C.P.A. 1964); Hueter v. Compco Corp., 179 F.2d 416; Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996); Static Control Components, Inc. v. Lexmark Int’l, Inc., 487 F. Supp. 2d 830 (E.D. Ky. 2007).

In recent years (and in the wake of Wal-Mart v. Samara), design patents have begun be more aggressively asserted by manufacturers in place of (or alongside) trade dress claims. See Coach, Inc. v. Brown Shoe Company, Inc., 09-cv-05051 (S.D.N.Y., Complaint Filed May 29, 2009) (handbag); Hubbell v. Dynamic Lighting (light fixture); Deckers v. Bon-Ton (Kona Boot); NetGear v. Tong Ho Fong (wireless router); Nufix v. Bacterin Int’l. (surgical implant); Oakley v. Pacific Trade (sunglasses); Nike v. Not for Nothi’n (Air Jordan shoes); Poof-Slinky, Inc. v. Ja-Ru, Inc. (toy rocket); Lowes Co Inc, et al v. Pelican Products Inc (flashlight); Williams-Sonoma, Inc. v. Linen Source Inc (lamp – Indian design patents asserted in US court); Olivet International, Inc. v. Skyway Luggage Company (luggage wheel rims); Cartier et al v. Egana of Switzerland (watch); Plantronics, Inc. v. Wireless Connections NY, Inc. (earloop receiver); BELL HELICOPTER TEXTRON INC. et al v. ISLAMIC REPUBLIC OF IRAN et al (helicopter design).

  

Google’s Patent on its GOOGLE.COM Home Page

Earlier this week, the USPTO issued a design patent to Google that covers the “ornamental design for a graphical user interface [GUI] … as shown and described.” Pat. No. D. 599,372. Design patent coverage is essentially defined by the images include in the issued patent. Here, the image looks roughly the same as the company’s ubiquitous Google.com homepage. (See image below.)

To be clear, many patent professionals would argue that it is misleading to ever simply call this “a patent.” Rather, it is a design patent. Design patents have limited scope in that they only cover ornamental designs rather than technological advances. The USPTO has been granting design patent protection for screen shots and icons for many years. However, to my (limited) knowledge, none of those design patents have ever been enforced in court. As with most design patents, it appears that during prosecution, the PTO never issued a substantive rejection based on novelty or obviousness. [UPDATE – I updated this paragraph based on messages from two of the leading design patent experts Saidman and Carani who rightly indicated that in the past several years, few design patents have been found invalid]

Dashed or “ghost” lines in the drawing indicate features that are not claimed. Thus, patent would be infringed by someone using an identical layout even if they replaced the “Google” mark with their own mark. You can note at the bottom that the design patent drawing is marked with a circle-c ©. That indicates that Google is also claiming copyright protection for this layout. In addition, in the design patent, Google indicates that it is also claiming trademark protection for portions of the layout and – perhaps – for the layout as a whole.

Although there is some conflict in the precedent, modern courts have generally allowed companies to overlap design patent, copyright, and trademark protection in the same way that a prosecutor may charge someone with multiple crimes that all stem from the same bad act. This only becomes a problem when applicants also attempt to include utility patent protection in the mix. The problem arises because inventions protected by utility patents are required to be “functional” while design patent, copyright, and trademark laws only protect “non-functional” elements. [The non-functionality doctrine varies considerably between the regimes.]

I like to think of the three regimes (design patent, copyright, and trademark) as essentially creating different rules of evidence to prove the same thing. All of the regimes have some sort of distinctiveness doctrine. For design patents, the design must be a novel and nonobvious advance; for trademark, the mark must help distinguish goods or services in the minds of consumers; for copyright, the work must be original. Likewise the elements of infringement are similar, but different enough to provide added value to someone concerned with protecting an underlying valuable asset.

Allowing overlapping protection has problems. Most notably, the ‘piling on’ effect may make it too expensive to challenge Google’s rights even if their claim to rights appears overreaching. In the criminal justice system, this has the same effect of pushing folks to plea bargain.

Google operates in part on its reliance on the fair use doctrines of copyright and trademark laws and has been a strong advocate of open access of copyrighted works (think Google books and Google’s indexing) and limited trademark rights (so that others can bid for Google ads on a competitors trade name). By relying on design patents, Google positions itself in a way that it can protect its rights based on patent doctrines while still arguing for weaker rights in those other areas.

Design patents remain in force for 14-years from the date of issue. Thus, Google’s design patent is set to expire on Sept 1, 2023.

I have taken a screen shot of the Google.com website from Sept 3, 2009. It pretty clearly would not infringe because of the differences between layout in the patent and the layout on the site.

Notes:

  • Read the computer programmer response on Slashdot.
  • File Attachment: patd599372.pdf (72 KB). Also, see Google’s patent on Google Patents.
  • It is pretty amazing that the patent lists ten inventors for that simple thing. Did each of those individuals contribute inventive material?
  • Inequitable Conduct?: According to the face of the patent, Google did not submit any prior art. The examiner found 13 largely irrelevant pieces of prior art. Google should have at least submitted a copy of its home-page from 1 year before its March 2004 application date. The screen-shot below is the Google page from one-year before its patent priority date. (via Internet Archive). The Screen Shot serves as 102(b) prior art and also serves as a non-infringing alternative for competitors.

PatentLawPic778

  • Gawker’s ValleyWag has more background in a post titled “Google Patents World’s Simplest Home Page.”
  • Continuations: This patent is part of a family of at least seven design patents. Six of them are still pending, but one issued as a patent in 2006 (D533,561) covering the layout of search results. The recently issued ‘372 patent was filed in 2006, but claims priority to the 2004 filing date of the ‘561 patent.

Preliminary Injunctions and Obviousness in Design Patent Law

Titan Tire Corp. v. Case New Holland, Inc.pic-44.jpg 2008-1078 (Fed. Cir. 2009)

Titan (the patentee) and Goodyear (the exclusive licensee) combined to sue Case for infringement of its tractor tire design patent. (Des. Pat. No. D. 360,862). The district court rejected Goodyear’s motion for preliminary injunctive relief – finding that the evidence indicated that the patent claim was probably obvious. On appeal, the Federal Circuit affirmed.

Standard for Preliminary Relief: In order to obtain the “extraordinary” relief of a preliminary injunction to stop infringement before a final judgment, the a patentee must prove that “(1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm in the absence of a preliminary relief, (3) the balance of equities tips in its favor, and (4) an injunction is in the public interest.” The likelihood of success requires proof that the patentee “will likely prove infringement, and that it will likely withstand [validity] challenges, if any.” When a defendant challenges a patent’s validity, the district court must weigh the evidence (both for and against) to determine whether the challenge “raises a substantial question” of validity.

“Thus, when analyzing the likelihood of success factor, the trial court, after considering all the evidence available at this early stage of the litigation, must determine whether it is more likely than not that the challenger will be able to prove at trial, by clear and convincing evidence, that the patent is invalid. We reiterate that the “clear and convincing” standard regarding the challenger’s evidence applies only at trial on the merits, not at the preliminary injunction stage. The fact that, at trial on the merits, the proof of invalidity will require clear and convincing evidence is a consideration for the judge to take into account in assessing the challenger’s case at the preliminary injunction stage; it is not an evidentiary burden to be met preliminarily by the challenger.”

The trial court’s decision on preliminary injunctive relief is reviewed for abuse of discretion.

Obviousness of Design Patents: Design patent claims are subject to the nonobviousness requirement of Section 103(a) — asking whether “the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” However, it is unclear how KSR applies to design patent cases. Unfortunately, this decision provides no answers except that “it is not obvious that the Supreme Court necessarily intended to exclude design patents from the reach of KSR.”

Ordinarily, design patent obviousness analysis begins with a primary reference with design characteristics that “are basically the same as the claimed design.” Secondary references are then combined so long as the secondary references are “so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.” Here, the lower court did not use the language of “primary and secondary references”, but the Federal Circuit found that the lower court’s obvious analysis was sufficient to for its denial of preliminary relief.

“[W]e cannot say the trial court abused its discretion in concluding that Titan was unlikely to withstand Case’s challenge to the validity of the ’862 patent on obviousness grounds.

Notes:

  • Read the case: 08-1078.pdf
  • The court explicitly avoided indicating whether obviousness analysis for design patents should be modified to conform to either KSR or Egyptian Goddess.

Bits and Bytes No. 116

  • Comments on Patently-O: I have updated the commenting software. Now there are threaded comments, so it is easier to reply directly to a prior comment. If you sign-up for a free Typepad account then you can personalize the image associated with your moniker.
  • Law Firms as Patent Owners: Photo site SmugMug recently filed a declaratory judgment action against the patent holding entity VPS, LLC. VPS previously settled with Pictage earning a “multi-million dollar fee” as well as with Kodak Gallery and Shutterfly. VPS’s ownership is interesting. Its managing partners are all patent attorneys: Carl Moore (patent attorney at Marshall Gerstein); Timothy Vezeau (patent attorney at Katten Muchin); and Nate Sarpelli. The VPS patents were originally assigned to Monet, Inc. but subsequently assigned to the Marshall Gerstein firm. In 2002, the law firm assigned the rights to VPS. (See Pat. No. 6,321,231). SmugMug Complaint for Declaratory Judgment.pdf
  • Design Patent Customs Registration: The IPO has voted to support a statutory change that would create a design patent registry within the Customs and Border Protection (CBP) bureau of the Department of Homeland Security. The CBP already keeps a registry of trademarks and copyrights to assist customs agents in preventing infringing importation through any of the 317 official ports of entry into the US. [CBP E-Recordation System] (No bill has been proposed.)
  • Tivo v. DISH and EchoStar: $190 million.
  • Update Your PTO Registration Data Online: Link. Before you can use the system, the OED will first send a letter to you with a User ID. After you respond, you will be sent a password.

Patents and the Auto Industry Bailout

In 2005, the PTO held a ceremony to commemorate the issuance of design patent number 500,000. The design patent went out to DaimlerChrysler for the design of the Chrysler Crossfire. Then Commerce Chief Gutierrez and PTO Director Dudas were on hand to note the importance of design patent design patents.

The patent has taken an interesting path – as shown by the assignment records at the PTO. Of course, DaimlerChrysler is gone, and Chrysler now owns the patent. In addition, Chrysler has given-up three separate security interests in the design patent. The first and second priority are apparently held in trust by the Wilmington Trust Company. The third priority is held by the US Department of Treasury based on a January 2009 grant and is apparently related to the company’s receipt of bailout money. [Assignment Data]. D500,000 is not the only patent implicated here – the assignment documents show that the US Treasury holds a security interest in more than 2,400 of Chrysler’s patents or pending applications. [More Assignment Data]

ScreenShot018

One important practice issue is raised: Absent a specific agreement, to what extent must the applicant consult secured creditors during the prosecution of a pending patent application?

Design Patents: Sailing Through the PTO

Over eighty percent of utility patent applications are initially rejected during prosecution. Some areas of technology – such as semiconductors – have a lower rejection rate while others – such as electronic commerce methods – have an even higher rejection rate.

I wanted to compare the result for utility patents with design patents. I pulled up information on 1000 of the most recently issued design patents (all issued in March, 2009) and parsed through the file histories to see how design patent prosecution compares. As the graph below shows, in my sample, only 25.6% of the recently issued patents received an initial rejection during prosecution. To be clear, this 25% rejection rate is for applications that eventually issue as patents. To get an overall picture of design patent rejections, we need to also consider the applications that are abandoned and never issue as patents. Recent PTO statistics show that a bit under 20% of design patent applications are abandoned. Because design patent file histories are kept secret unless a patent issues, we cannot know why any individual case is abandoned – However, the two most likely situations are that the applicant (a) failed to respond to a rejection or (b) failed to pay the issue fee. Even if we assume that 100% of the abandoned cases are initially rejected, that only pushes the initial rejection rate to about 40%.

As the graph below shows, of the 1000 issued design patents in my sample, only 4.1% received a final rejection during prosecution; and only 0.2% cases (2 out of 1000) included a notice of appeal. None of the 1000 cases included an appeal brief.

The design patents in the study had an average pendency of 15.3 months calculated by finding the number of months between the filing date and the issue date. As may be expected, applications that included at least one rejection took considerably longer to issue (21.5 months) as compared to those that were never rejected (13.2 months). (These means are different at 99.9 CI).

Most design patents (58%) in my sample have only one inventor. However, 69% of the inventors are listed as joint inventors. A number of the muliti-inventor patents included trans-national inventorship with inventors originating from two or more separate countries. About 1% of the applications listed at least one inventor from the US & Great Britain. Another 1% listed at least one inventor from both the US and China.

Protecting Design Patents on Shoes

Nike v. Wal-Mart (N.D. Ill. 2008)

Nike has sued Wal-Mart for design patent infringement asserting infringement of Pat Nos. D498,914 and D499,248. As with many design patent lawsuits, the patentee here (Nike) also makes a product covered by the design. Design patents have become more important to Nike as the company’s trademark ‘swoosh’ has been less prominent in recent shoe designs. Every year during the past decade, Nike has ranked in the top ten owners of newly issued design patents. 

Damages for design patent infringement may be calculated a few different ways. Section 284 calls for compensatory damages with a base of a “reasonable royalty.” Section 289 looks to disgorge profits from the infringer.

In the late 1990’s, Nike won another shoe design patent case against Wal-Mart. In a damages appeal, the Federal Circuit found that Nike had not properly marked its products — holding that to take advantage of the marking statute, a patentee must prove “that substantially all of the products being distributed were marked, and that the marking was substantially consistent and continuous.” Nike Inc. v. Wal-Mart Stores, 138 F.3d 1437 (Fed. Cir. 1998) (Newman).

Notes:

  • The top image is a portion of the infringement claim chart from the complaint. The second (pink) image is a Nike shoe.
  • First seen on Patent Hawk
  • Nike Complaint

En Banc Federal Circuit Revives Design Patent Law

Egyptian Goddess v. Swisa (Fed. Cir 2008, en banc)

In a rare unanimous en banc opinion, the Court of Appeals for the Federal Circuit has revived the value of design patent protection by loosening the standard for infringement. The opinion – penned by Judge Bryson – rejects the “point of novelty” test as a requirement to prove infringement of a design patent. Instead, the judges agree that the 1871 Gorham “ordinary observer” test is the “sole test for determining whether a design patent has been infringed.”

The focus of the Gorham test is to look for substantial similarity between the patented design and the accused design. It is called the ordinary observer test because the similarity is considered from the perspective of an ordinary observer who is familiar with the art. Although Gorham only requires a comparison between the patented and accused designs, prior art designs will generally be useful for highlighting differences. A second pro-patentee rule that emerges from this case is that the burden of production of prior art designs will fall on the accused infringer. On claim construction, the Federal Circuit agreed that a ‘verbal description’ of the diagrams is not required, but will not – by itself – be reversible error.

Ordinary Observer With a Tight Focus: Although the patentee was able to change the law, it actually lost the day. In the appeal, the CAFC concluded that even under the ordinary observer test, “no reasonable fact finder could find that EGI met its burden of showing, by a preponderance of the evidence, that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design.”

The courts application of the law shows that proving infringement under the ordinary observer test will not be a walk in the park for design patent holders. Many cases will likely still turn on technical points of similarity rather than simply a broader totality of similarity. Yet, despite the potential difficulties, the situation is vastly improved from the hardships imposed by the point of novelty test.

More to come…

Auto Parts Design

PatentLawPic356Ford Global Technologies v. ITC (Fed. Cir. 2008) (The F-150 ITC Case) (CURRENTLY ON APPEAL)

In 2007, the International Trade Commission (ITC) issued a final decision finding three Ford design patents invalid based on a prior public use. The patents relate to various parts of its F-150 truck design. Ford had asked the ITC to stop generic parts manufacturers from imports of the patented designs that were flowing in from Taiwan. In its decision, the ITC found seven of the design patents valid and infringed, but found that three of them were invalid.

Prior Public Use: The alleged prior public use in this case was an event where Ford selected 900 members of the public to attend in small groups and provide feedback on proposed car designs. At the event, security was “high,” cameras were banned as were sketches. Thus, according to Ford, the attendees could not have truly disclosed the ornamental features of the patented design. The invitees were also paid – and thus, disclosure to those individuals should be presumptively be considered private (as would normal in house discussions with an employee). Ford also argues that the payment to attendees is clear evidence that this public use was not “commercial exploitation.”

PatentLawPic359Almost no Scope: Many design patent holders run from the Federal Circuit’s 1988 in re Mann decision announcing that “design patents have almost no scope. In the auto-parts industry, however, no scope is needed so long as the patented designs are identical to the marketed products. The generic part importers are “slavishly copying” Ford’s original design — thus infringement should be open-and-shut. (See discussion below).

Ford embraced the narrow scope of its design rights – arguing that there its controls over the feedback event of preventing cameras or drawings ensures that none of the attendees will be able to place the invention in the public domain. Notably, in a recorded post-show follow-up, attendees who were asked about the design could only describe it in general terms such as “beefy.”

“The video evidence shows that the claimed ornamental features of the patents-in-suit were not in the public’s possession. Without cameras or sketches – which were specifically prohibited – there was no way here that the claimed designs could have been disclosed to the public. Ford therefore did not “remov [e] inventions from the public domain which the public justifiably comes to believe are freely available.” … In short, “beefy front end” and “a chopped top” do not describe or disclose the design inventions.

PatentLawPic360Is Point of Novelty Analysis Required?: In its counter-appeal, the Taiwanese manufacturers argue that infringement was improperly found because the ITC failed to perform the point-of-novelty test which, according to the defendants, is required even when the patented design is identically copied.

“[E]ven though the court compares two items through the eyes of the ordinary observer, it must nevertheless, to find infringement, attribute their similarity to the novelty which distinguishes the patented device from the prior art.”‘ Lawman, 437 F.3d at 1386 (quoting Litton, 728 F.2d at 1444).

The defendants are correct that Lawman and Litton appear to require the point-of-novelty test in every case of infringement. That issue will likely be resolved in the upcoming en banc decision in Egyptian Goddess. In addition, the defendants argued that the design patents should be considered obvious under KSR v. Teleflex (2007). As in that case the claims appear to be composed of a set of elements all found in the prior art.

An amicus brief was filed supporting the generic manufacturers. However, I have not yet seen that brief. In addition, the ITC recently began investigating another design patent complaint filed by Ford against the same generic manufacturers. This new case involves repair parts for the 2005 Mustang redesign.

Note:

  • A reader reminded to me to mention pending H.R. 5638 and the PTO’s town hall meeting next Monday to discuss design patent issues. (written comments due July 15). 
  • Unlike the patent reform bill, H.R.5638 is a partisan Democrat sponsored bill that would primarily support the insurance industry and make automobile repair less expensive by excusing repair parts from patent infringement. The bill would amend 35 USC 271 by adding the following subsection:
    • (j) It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States any article of manufacture that itself constitutes a component part of another article of manufacture, if the sole purpose of the component part is for the repair of the article of manufacture of which it is a part so as to restore its original appearance.