Re-Litigating Gorham v. White: Design Patents at the Supreme Court

ScreenShot016Saint-Gobain Calmer, Inc. (now MeadWestvaco Calmer) v. Arminak & Associates, Inc. (on petition for certiorari 2008)

In 2007, the Federal Circuit dealt a serious blow to design patent protection by determining that an intermediate corporate purchaser is the “ordinary observer” for infringement analysis.  A professional corporate purchaser is presumably more likely to see differences between the patented design and an accused infringing device — thus making infringement more difficult to prove.

Calmer’s design patent, for instance, covers a sprayer shroud that is then combined with the trigger mechanism, bottle, etc.; filled with some liquid; and shipped to Wal-Mart for retail sale. The Federal Circuit’s holding looks to the typical buyer at the point where the allegedly infringing shroud is first sold to determine whether that individual would believe that “the patented design as a whole is substantially the same as the accused design.”   

Calmer has now petitioned the Supreme Court asking two questions:

  1. Whether the [Federal Circuit’s] use of expert viewpoints to determine design patent infringement is in direct conflict with this Court’s decision in Gorham Co. v. White, 81 U.S. 511, 529 (1871)?
  2. Whether the [Federal Circuit’s] test for design patent infringement of a component product, which considers deceptive similarities only as to the first purchaser of any product including the patented design, directly conflicts with its own precedent and with this Court’s “ordinary observer” test mandated by Gorham Co. v. White, 81 U.S. 511, 529 (1871), by excluding not only unsophisticated purchasers but also later purchasers of products including the patented design as a component?

As I write in an upcoming paper, the justification for design patent protections is more akin to traditional trademark policy than utility patent policy. With that in mind, it makes some sense allow design patents to operate at the retail level.


18 thoughts on “Re-Litigating Gorham v. White: Design Patents at the Supreme Court

  1. 18

    Design patents are very silly toys that accomplish nothing except to line the pockets of lawyers.

    That said, if the Supremes approve of the Gorham test then fun of invalidating design patents can begin in earnest. The same test for infringement must apply to validity. If Joe Sixpack looks at Design A and it “looks pretty much like” prior art Design B, then say buh-bye to the design patent.

  2. 17

    Calmar v. Arminak centers on the following fundamental issue: “Through whose eyes should design patent infringement be determined?” (Yes, it really is that fundamental.)

    Quick Summary of IDSA Amicus Argument
    In Gorham v. White, the U.S. S.Ct. held that design patent infringement was to be judged through the eyes of the “ordinary observers,” and not “persons in the trade.” (e.g. merchants, dealers, designers, brokers, etc.)

    In Arminak, however, the Federal Circuit held that the ordinary observer was an “Industrial Buyer”, and not the retail consumer.

    Arminak must be reversed for the following reasons:

    1) Arminak’s selection of Industrial Buyers as “Ordinary Observers” directly violates Gorham, which prohibits design patent infringement determinations based upon the perceptions of “persons in the trade.” Simply put, Industrial Buyers are “persons in the trade.” Indeed, the Gorham Court stated that a design patent infringment test that uses the perceptions of persons in the trade “would destroy all the protection which the act of Congress intended to give.”

    2) Arminak’s new test for identifying “Ordinary Observers” wrongly excludes the perceptions of everyday observers, such as retail consumers and jurors. Arminak’s new test wrongly concludes that everyday observers, such as retail consumers and your average jurors, do not possess “the capability of making a reasonably discerning decision when observing the accused item’s design [to determine] whether the accused item is substantially the same as the item claimed in the design patent.” Yet, these everyday observers possess precisely the everyday perceptions and sensibilities that the Gorham Court sought to utilize with its “ordinary observer” test. Accordingly, the new Arminak test for selecting the ordinary observer also violates Gorham.

    -Chris Carani
    Counsel of record for IDSA

  3. 16

    “The ones that turn out to be really important take too long to get; if nothing else, design protection is market-entry protection, to stop knock-offs”

    Why not get rid of design patents and pass an anti-“knock off” law that prevents people from copying “your” *exact* design for, say, five years after you bring your product to market?

    What would be the problem? Hint: the answer is NOT that it would make it more difficult for giant corporations to enjoin competitors.

  4. 15

    Known Unknown:

    Many designs have a commercial lifetime of only a few months (e.g., dresses) or a few years (e.g., sunglasses). Any examination process would only begin after the product and its copies were no longer interesting. Since the scope of a design patent is more or less limited to one-to-one copying, no one gets hurt by a registration system.

    Utility patents generally cover some “inventive concept” that can be embodied in many different products so that the scope of any patented claims has to be well-defined, something that requires examination.

    I am against registration of utility patents because then the patents will have no “public notice” function. That said, patent attorneys will make much more money in a patent registration system than in the current system. First, without examination a patent will be much cheaper so Inventors will write more patents to be registered. Second, there will be a great demand for non-infringement opinions, invalidity opinions and inter partes examination.

  5. 14

    I have a pending patent application whereas the only prior art in the whole database of the PTO is a design patent that somewhat resembles my invention-only somewhat-there are substantial differences upon closer inspection. I know that this DP can and will be sited as prior art against my app. but can it render my utility application as moot-no claims to read on and I have claims for apparatus and method. Throw out the unobviousness factor-can’t be predicted.

  6. 13

    “. . . a small company usually doesn’t know in advance which of its 100 new designs will really make it in the marketplace. So why spent thousands on a design patent when 99% of them just sit there, never being asserted or challenged? The ones that turn out to be really important take too long to get”

    All of this could be said with equal validity about utility patents. I wonder if design registration is opposed by some patent lawyers because they fear it will be used as a stalking horse for a more general utility patent registration system in which lawyers get to bill less.

  7. 12

    And I’m not Malcolm Mooney (at least I do not say ridiculous things while hiding behind a pseudonym), and the answer is “yes”.

    Ideally, designs would be registered, as is done in Europe (the Community Design), and if anyone is interested in the validity of the registration, they can challenge it in a separate proceeding. Registration of designs takes into account that many companies introduce hundreds, if not thousands, of designs annually, making it financially impossible to obtain a design patent on each one. And a small company usually doesn’t know in advance which of its 100 new designs will really make it in the marketplace. So why spent thousands on a design patent when 99% of them just sit there, never being asserted or challenged? The ones that turn out to be really important take too long to get; if nothing else, design protection is market-entry protection, to stop knock-offs, and a design registration ought to at least be quick (in Europe, you can get a registration within weeks, and their goal is 48 hours).

    A design patent can be thought of as a design registration that has been examined for validity (i.e., patentability). If it is known in advance that the design is important, or it later becomes important, pay the money and get yourself a design patent with its attendant presumption of validity. So, a design registration is a Chevy, and the design patent is a Cadillac. Again, ideally, one could obtain their quick & dirty design registration, and within 2 years convert the registration into a design patent application with the ability to claim priority from the filing date of the registration, thereby preserving novelty rights.

  8. 11

    I presume that I have the typical non-corporate patent lawyer’s knowledge of design patents (I know how to file one, have never litigated one and file them when appropriate to give my client what I tell him is nominal protection). I have no idea if design patents evolved from the English patent system (did one run a writ to the King asking for an industrial design monopoly? — if one could be the Queen’s haberdasher, why not be the King’s ale stein maker).

    Perhaps there is some insight in the historical basis for design protection which would shed some light on the current tension between design patents, trademarks, trade dress and copyrights.

  9. 10

    I think that’s a TERRIBLE standard. Any worthwhile corporate purchaser should be deemed an EXTREMELY SKILLED observer. After all, they’re the person you go to when you need to replace some missing hanging folder rails on a 15-yr-old lateral file cabinet that may or may not still be manufactured. They’re the ones who are used to distinguishing between OEM parts and after-market parts, and cutting through the appearance of a thing to understand its functionality. If they’re any good, they have trained themselves to specifically IGNORE any kind of trade dress. They also (theoretically) love infringing goods, since they’re usually cheaper.

    That’s a ridiculous standard.

  10. 9

    Notably lacking from the cert petition is any serious effort to show that this is a case of great importance. Let’s assume there is a lot of tension between the CAFC decision and that 137 year old Supreme Court case. So what?

    I don’t know if a dispute over the “ordinary observer” test in design patent cases is “compelling” under Supreme Court Rule 10. Since we can hardly presume that, it would have been helpful for the petitioner to at least try to make that point.

  11. 8

    I’m not Perry Saidman but the answer is “no.”


    “if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

    Of course this is no different from a likelihood of confusion test. But as a factual matter it illustrates how meaningless design patents are. Either this is the test and design patent merges with trade dress, or this isn’t the test and design patents do not protect patentees from infringement by indistinctly different knock-offs.

    In either case, there is no point to having them unless you are a big corporation with the $$$ required to make life hell for anyone regardless of the crappiness of the asserted design patents.

  12. 7

    A question for Perry Saidman. If you had a magic wand with which to freely rework trademark, trade dress and copyright law (and to give you a really free hand, perhaps some sort of design registration system to boot), would you even bother having such a thing as a design patent?

  13. 6

    You’ve asked a very significant question, one which it appears Professor Couch may opine on shortly. The Supreme’s Gorham v White case, from 1871, articulated the test for design patent infringement using language that suggests deception is a necessary element of proof (“We hold, therefore, that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”). In fact, this sounds awfully much like a test for trade dress infringement, using likelihood of confusion language; however, the CAFC has explicity held that design patent infringement does not include a likelihood of confusion analysis. As far as I am aware, no one has figured out the origins of the Gorham formulation (Dennis?), but it stands to reason that the CAFC has been slowly but surely importing trade dress principles (e.g., functionality) into design patent jurisprudence. Whether this has been accidental, or more a function of how Gorham was formulated, and whether it is an appropriate infringement test for a purely statutory form of design protection, where use of the design is not a prerequisite to having protection, shall have to wait for someone’s scholarship, or for the SCOTUS to revamp in the Calmar case.

  14. 5

    Isn’t this arguing of “DECEPTIVE similarities” further confusing design patent law with trade dress issues?

  15. 4

    Setting aside the typical (for this blog) disparagements stemming from the likes of “ordinary inventor” (I’ll skip the irony here), and the non-eagerly anticipated MM rant, the Gorham “ordinary observer” (get it?) test is not addressed in Egyptian Goddess, so the latter should not directly affect the cert. petition. However, although not mentioned in the 2 questions posed by Calmar, a portion of its cert. petition does address the point of novelty test, probably because Calmar also needs the CAFC’s holding on that issue reversed in order to ultimately win its case. So, if the Supremes are actually moved to grant cert. to reexamine its 1871 Gorham precedent, they may well bring into play the entire test for design patent infringement, i.e., the ordinary observer test and the point of novelty test. More likely, however, is that given the en banc rehearing in EG, the Supremes will punt on the point of novelty issue while the CAFC grapples with it. After all, the SCOTUS will have yet another opportunity to reverse the CAFC after the en banc on EG is handed down and the “loser” files its inevitable cert. petition, squarely presenting the Markman and point of novelty issues for SCOTUS review.
    On the merits now facing the SCOTUS in Calmar, the CAFC holding so directly flies in the face of Gorham, the Supremes might find it tempting to reexamine its venerable 137 year old precedent, now under attack, again given yet another opportunity to slap down the CAFC.

  16. 3

    Egyptian Goddess deals with claim construction and point of novelty issues, and doesn’t address the ordinary observer test. From what I can tell by the questions presented, this cert petition deals only with the ordinary observer, so perhaps the Goddess case won’t affect cert.

  17. 2

    DDC, the link to the cert petition doesn’t seem to be working.

    Anyway, from what I can tell from the post, I imagine that Egyptian Goddess might show up in the opposition brief. Maybe this is the wrong crowd for this question, but assuming that the Supreme Court thought that Egyptian Goddess was going to consider the same issues, how would that affect its disposition of the cert petition?

    The Supreme Court will GVR cert petitions for reconsideration by the court of appeals in light of a recent Supreme Court case, but I’ve never heard of that happening where the direction is to reconsider in light of a new court of appeals case.

    Then again, the question whether the ordinary observer operates at the retail level or at some intermediate step is probably not squarely presented in the Egyptian Goddess case.

  18. 1

    Dear Malcolm,

    Can you believe they are wasting judicial resources on this stuff (8-,) [that is a long funny face not believing they are wasting judicial resources]?

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