By Sarah Burstein, Associate Professor of Law at the University of Oklahoma College of Law
Samsung Electronics Co., Ltd. v. Apple Inc. (on petition for a writ of certiorari)
In its recently-filed cert petition, Samsung makes some particularly interesting arguments about design patent claim construction. Specifically, Samsung argues “that district courts have a duty to construe [design] patent claims and eliminate unprotected features” under Markman and that the Federal Circuit has erred in “allow[ing] district courts . . . to decline to provide any meaningful claim construction.” To put these arguments in context, a bit of background is in order.
Twenty years ago, the Federal Circuit held that Markman applies to design patents. Since then, it has struggled to decide and describe how, exactly, it applies in the design context. This difficulty isn’t particularly surprising. Markman (and later Supreme Court cases about claim construction) only dealt with utility patent claims. And utility patent claims are fundamentally different from design patent claims. Unlike utility patents, design patents can contain only one claim. The verbal portion of this claim must (in general) read as follows: “The ornamental design for [the article which embodies the design or to which it is applied] as shown.” The phrase “as shown” refers to the drawings or photographs submitted by the applicant. Therefore, design patent claims consist mainly of images, not words.
The Federal revisited the issue of Markman and design patents in 2007. When it granted en banc review in Egyptian Goddess, the court asked for briefing on the issue of whether claim construction should apply to design patents and, if so, what role that construction should play in the infringement analysis. The court received numerous amicus briefs on this issue, expressing a wide range of opinions. When the court issued its decision in 2008, it ruled that district courts do not have to—and ordinarily, should not—construe a design patent claim by providing a detailed verbal description of the design. It suggested that district courts could, nonetheless, “usefully guide the finder of fact by addressing a number of other issues that bear on the scope of the claim” by, for example, describing any relevant drawing conventions, describing the effect of any relevant matters in the prosecution history, and “distinguishing between those features of the claimed design that are ornamental and those that are purely functional.”
Then, in its 2010 decision in Richardson, the Federal Circuit indicated that district courts should “factor out” functional elements in construing design patent claims. This “factoring out” approach proved to be both unworkable and unnecessary, as Chris Carani explained in this recent LANDSLIDE article. (I think of this whole line of cases as the “FUBAR cases,” in reference to the product at issue in that case.)
When Apple v. Samsung was before the Federal Circuit, Samsung argued the district court erred in “fail[ing] to instruct the jury to ‘factor out’ the unprotectable structural and functional elements of Apple’s designs,” relying on Richardson and related cases. The Federal Circuit disagreed. In its May 2015 decision in Apple v. Samsung, the court ruled that its case law did not support Samsung’s “structural” argument. It also seemed to back away from Richardson, insisting that case “did not establish a rule to eliminate entire elements from the claim scope.” A few months later, the Federal Circuit backed even further away from Richardson in Ethicon.
In its cert petition, Samsung does not rely on—or even mention—Richardson. Instead, Samsung advocates a new approach to design patent claim construction.
Samsung’s approach is based in requirement that a patentable design be “ornamental.” Samsung argues that certain features (or aspects) of a design cannot be “ornamental” as a matter of law and that district courts must “eliminate” these “unprotected features” during claim construction.
So what are the “unprotected features” that Samsung wants courts to “eliminate”? Samsung argues that an ornamental design “cannot include ‘functional’ features, for those are the proper domain of utility patent law,” citing Bonito Boats. In this respect, Samsung’s approach sounds similar to one taken in the FUBAR cases. But Samsung would apparently go further, arguing that an ornamental design “cannot include concepts, shapes or colors,” likening them to “abstract ideas” or “physical phenomenon” under Bilski.
Samsung argues that “[a] district court can easily . . . identify to a jury a design patent’s conceptual, functional and ornamental aspects, and instruct a jury not to find infringement based on conceptual or functional similarities.” Whether or not this would actually be easy may be a matter of some debate, especially in light of past experience with the FUBAR cases. It’s also not clear what would qualify as a “conceptual” aspect (or feature) of a design.
And as a larger policy issue, it’s questionable whether verbal claim dissection is either desirable or appropriate in the context of design patents. The better approach may be, as Chris Carani argued in the LANDSLIDE article mentioned above, to simply instruct juries “that design patents only protect the appearance of the overall design depicted in the drawings, and not any functional attributes, purposes or characteristics embodied in the claimed design.”
It’s also worth noting that under Egyptian Goddess, the prior art may be used to narrow the scope of a claimed design—not through formal claim construction but as part of the infringement analysis. But in Apple v. Samsung, prior art that could have been used to narrow the scope of the claimed designs was not admitted at trial. So, if anything, this case represents a failure to make full use of the Egyptian Goddess framework, not a failure of the framework itself.
Professor Burstein has written a good post. But I’m not sure I agree with her that Samsung is advocating a different approach to claim construction. After all, in advocating that the court “eliminate” so-called functional features because they are not ornamental is exactly what Richardson was all about. Blessedly, as pointed out by the Professor, Richardson’s “factoring out” language has been properly put in its place by Ethicon (a case that is a major step forward in design patent jurisprudence). The district court in Ethicon, after identifying all of the elements of the patented design as “functional”, concluded that the scope of the design patent was therefore “nothing”. On appeal, the Federal Circuit disagreed, properly noting that the design patent claim in fact covered the appearance of those functional elements. Moreover, it made clear that what was being “factored out” in Richardson, if anything, was the concept of a hammer head, crowbar and handle, not its particular appearance. The Court went even further in putting OddzOn in its place, noting that the design patent claim in that case did not cover the concept of a football with fins, but the appearance of the patentee’s particular football and fins. Not unimportantly, the OddzOn case was the one cited by the Court in Egyptian Goddess when it said that as part of design patent claim construction a court could distinguish “between those features of the claimed design that are ornamental and those that are purely functional.” Now we know what that means, namely, you can’t use design patents to protect concepts, only particular embodiments, i.e., designs, of those concepts. The only way to protect concepts is to get yourself a utility patent (check out the old Lee v. Dayton Hudson case which basically said exactly that). No one disagrees that design patents cannot protect concepts, but Samsung conflates concepts with functions, and therefore confuses the issue.
Good points. The “factoring out” should eliminate components that ONLY have functional utility.
In a broader note: IMO, the US should separate Patents and Designs, as in most other countries, who don’t use the term “Design Patents” rather “Industrial Designs” or the like.
I simply don’t understand why a concept so distant from function should be contorted to fit in the (US) Patents Law.
I more or less agree with Samsung on this particular issue of lawl though I express no opinion on their case itself.
Thanks!
Regarding “patent” construction, if one reads Supreme Court decisions over centuries, the Court always discussed the prior art in construing utility patents to illustrate what the invention was. In design patent cases, we learn that one instructs the jury about the prior art and relevant prosecution history, but as a part of the determining infringement. What really is going on it seems is that this gives the jury enough background in order that they determine what is really new so they might focus on that in determining whether there is infringement.
Back in the day when the Markman hearings were first created, a senior litigator and I discussed the problems that they brought to the patent law in that the person determining whether a particular construction was correct no longer could take into account why the issue was important – why patent validity or infringement depended upon the answer. Like I said, I think we have lost our way even in the construction of utility patents.
What we need in utility cases is that claims be construed as part of summary judgment motions involving either validity or infringement, or as part of the trial briefs where the issues about infringement or validity are discussed in detail. The judge needs to know why the issue is important, otherwise he is really giving somewhat of an advisory opinion which is never a good idea.
Oh Ned, what a joy it was to read from you above this text:
“..when the Markman hearings were first created, a senior litigator and I discussed the problems that they brought to the patent law in that the person determining whether a particular construction was correct no longer could take into account why the issue was important – why patent validity or infringement depended upon the answer.”
Why? Because it encapsulates something which for me, educated in the patent law of England, is self-evident. Consider students working hard to pass the UK Patent Attorney Qualifying exams, the one that requires the candidate, in a few hours in a closed examination hall, to study the patent, the prior art, and the accused infringement, and then write an opinion on infringement and validity. The ones that waste time construing claim terms not pivotal to the issues of infringement and validity are the ones who fail because somebody who can’t “see the wood for the trees” lacks what is essential for a jurist and their exam answer demonstrates their lack of suitability for the profession.
link to idioms.thefreedictionary.com
One citizens opinion…
It’s way past time to re-examine the intellectual rights clause within our Constitution. The phrase, “cant see the forest for the trees” seems to rule our our intellectual rights oligarchy. Too often patent and copyright protections granted serve the opposite intent provided within the constitution of promoting science and useful arts. It seems the new battlefield of commerce is to use flawed patent/right laws as a way to thwart science and usefulness.
I get only get one vote…but my vote would void any intellectual rights granted if it serve a contrary purpose stated within the constitution. (cc my elected officials)
Dou, the Supreme Court agrees with you.
The Federal Circuit seems more focused on serving the needs of big business, whether it is to protect their investments or whether it is fend the off trolls. For example, I cannot think of any other explanation for their (both the CCPA and the Federal Circuit) long advocacy to expand patentable subject matter to patent software even, business method software.
Then there is the issue of functional claims.
New year.
Same old Ned.
anon, you did make a good point about the fact that all inventions can be abstracted and stated as a principle. It seems to me that the Supreme Court could not have intended that every invention be potentially ineligible, but only those that claimed non statutory subject matter.
I do agree, therefor, that the Supreme Court test is virtually unintelligible unless translated.
Remind me again which branch of the government was authorized to write patent law (a form of law known as statutory law, to be expressly contrasted with common law)…
Ned: It seems to me that the Supreme Court could not have intended that every invention be potentially ineligible
Who believes that the Supreme Court intended otherwise? Nobody that I know. Do you know anyone who believes otherwise, Ned? If so, please share that information.
[“anon”] did make a good point about the fact that all inventions can be abstracted and stated as a principle.
That’s not a “good point” unless the process of “abstracting” being used is consistent with common sense and Supreme Court jurisprudence. And from what I’ve seen of the endless, relentless efforts of “anon” and his cohorts to “abstract” everything into ineligibility, there is no rhyme or reason whatsoever to what their doing.
Meanwhile quite a few of us can predict quite readily what is likely to be deemed ineligible and what isn’t, and why. And it’s not that difficult.
Please stop playing patty-cake with people who refuse to even acknowledge that subject matter eligiblity is more than just a technical drafting requirement.
“And from what I’ve seen of the endless, relentless efforts of “anon” and his cohorts to “abstract” everything into ineligibility, there is no rhyme or reason whatsoever to what their doing. Meanwhile quite a few of us can predict quite readily what is likely to be deemed ineligible and what isn’t, and why. And it’s not that difficult.”
Cool. Define “abstract”. Beyond it being like pornography: MM knows it when he sees it.
Define “abstract”.
It’s in the dictionary. Look it up. Great place to start if you’re confused.
Except that is precisely NOT what the Court did, now is it, Malcolm?
Funny how you do not seem able to grasp that point – even after having it (politely) explained to you, multiple times.
Except that is precisely NOT what the Court did, now is it, Malcolm?
Odd that you would ask me. As I already indicated, I’m quite sure the Supreme Court is aware that the term “abstract” has a definition, and I’m quite sure that they know what that definition is, and I’m quite sure that the precise scope of the term as understood by those nine minds is very close to that dictionary definition.
If you believe otherwise, maybe you can explain why using plain English and declarative sentences. And evidence. Good luck with that.
Time for you to read the decision itself again Malcolm.
In particular to what Justice Thomas states.
And this is NOT a matter of what I believe (nice attempt to mischaracterize the situation).
“anon” this is NOT a matter of what I believe
LOL
Keep digging, “anon.”
“Keep digging”
Says the man with the shovel clenched in his hands…
Because Ned – the only one of the regular anti’s who even attempts a conversation – is “playing patty cake.”
Nice ecosystem Prof.
MM, as I said before, I think the Supreme Court has silently adopted the Stevens dissent from Bilski and is looking at things like business methods as nonstatutory. But because they are bound to follow Bilski, they are using the term “abstract” as a pseudonym for nonstatutory.
But the Federal Circuit and the lower courts have found claims abstract that are not directed to nonstatutory subject matter but are rather abstract in the traditional sense in that they are claimed at the level of the idea.
Ned,
“As I said before”
And as you have been corrected before, the Stevens “concurrence” which was really a dissent and his lost majority position in Bilski has diminished in further Supreme Court cases – the opposite of what you are trying to “sell.”
3, the new 4, is STILL not 5.
This is exactly the type of diatribe C R P that is attempted ad nauseum on this blog that attempts through the internet age style of “shouting down” to garner some semblance of “truth” by mere repetition.
The blind pursuit of an agenda – the desired ends – by the sAme ones – over and over and over and over…
Ned: they are using the term “abstract” as a pseudonym for nonstatutory.
What is your evidence for this conclusion? It seems to me they are using the term “abstract” to mean “abstract.”
Remember: the issue is whether the claim protects an “innovation” over the prior art that is abstract. If it does, then you’ve got a problem and it doesn’t matter so much that you can hold an object falling within the scope of the claim “in your hand”.
“and it doesn’t matter so much that you can hold an object falling within the scope of the claim ‘in your hand’.”
Ned has never – and I do mean never – been able to recognize that point and its subsequent meaning that the Court has written out actually meeting one of the statutory categories.
Ned has NOT been able to do this because in part his “world view” depends on a “hard goods are in” 19th century mindset.
Evidence?
Math was declared to be non statutory. See, Flook.
A business method was held to be ineligible in Bilski.
A business method was held to be ineligible in Alice.
A law of nature was held to be ineligible in Mayo.
A product of nature is held to be ineligible, indeed nonstatutory in Myriad.
Now compare the above to Rubber-Tip Pencil where the claim was held to be non-patentable because it was directed to an idea, which is really what the Supreme Court had in mind as being abstract in the original cases of Le Roy v. Tatham and O’Reilly v. Morse.
Ned,
You are “manipulating” things (yet again).
You (no doubt purposefully) mistate the singular and plural – as if there was NO difference, and there is .
The “business method” items are singular – and expressly NOT ALL of them.
The laws and products of nature are plural – and expressly ALL of them.
You simply do not get to treat theses things as interchangeable as you are attempting to do.
anon, Kennedy asked the patent owner in Alice to give one example of a patentable business method. He got no answer.
I presume your position is the same as the patent owner in Alice with respect to the question posed by Justice Kennedy.
He asked the attorney that question (as opposed to the patent owner).
That attorney’s LACK of answer is nowhere dispositive of ANYTHING.
You ASSume wrong – as I have often reminded you that even on this blog there was a guest post showing various business method patent grants throughout the history of the Office.
I also note that you are trying to deflect from the manipulation topic I pointed out – and that you never did answer the point about Congress adding a limited defense to a subset of business method patents when IF your view were to be correct, no such limited defense would even be needed.
New year – same C R P inte11ectually DIShonest postings from you Ned.
anon, in every prior case of PTO patents on so-called business methods, there also has been some novel apparatus or manufacture involved.
Ned: method as a category…
Your curse-ade is tilting Windmills (again).
… and you appear to be doing nothing more than glomming on (again) – without using the actual words – of your decrepit Machine or Transformation doctrine.
That’s a clue – NOT a legal requirement.
anon, I agree that without a definition, there can be no categorical exclusion. But I think the Supreme Court in both Bilski and in Alice was convinced that the claims before it was not patentable, primarily because they were not directed to anything that could remotely be described as an improvement to a machine, a manufacture, or composition.
New year – same old Ned.
“because they were not directed to anything that could remotely be described as an improvement to a machine, a manufacture, or composition.”
The statutory class of “method” is NOT a sub-class of the hard goods classes.
You continue to rely on this odd 0bsession with only the hard goods classes somehow solely being meritorious of patent coverage (your MoT elevation error).
anon, The statutory class of “method” is NOT a sub-class of the hard goods classes.
So say you without any support.
Useful Arts -> technology.
Technology -> machines, manufacture and compositions.
Thus a process must be related to machines, manufactures or compositions to be within the Useful Arts.
Processes that are not related to technology are not what 101 is about.
The real problem is that the design patent damages law is a relic from two centuries ago, and is as relevant to current technology as Newtonian Physics is to string theory. Maybe Congress can do something meaningful with patent law this year, and stop allowing design patent trolls to seek damages on the profits for things like jet liners and cruise ships because they incorporate an ornamental design for a cup holder or the like.
There is a difference between the design of a jetliner or cruise ship and the design of a cupholder that is found on a cruise ship. There is solid case law support for this distinction. But there is no solid case law support for the proposition that the damages should be apportioned according to the value of the invention to the demand for the article, a quasi a reasonable royalty type limitation on damages.
Ned I like your cruise ship and cup-holder example but ex-patent judge Robin Jacob had what I think was a better one. Your cup-holder is very extricable, much more so than a steam-whistle on an aircraft carrier. Besides, an aircraft carrier sails as part of a flotilla, a squadron, a battle fleet, wheras a cruise liner sails alone. Should I claim my steam whistle in Jepson form: A battle fleet with the improvement comprising (my nifty new steam whistle)?
“In Jepson form”
What a lovely option.
You might rephrase that to say “The real problem is that PATENT CASE LAW is a relic from two centuries ago, and is as relevant to current technology as Newtonian Physics is to string theory”. Does anyone think we should be citing cases from 100 years ago (or even Benson from the 60s) for modern technology, which has blown by those? Trying to apply Benson to modern technology is useless or meaningless. (And that assumes one can figure out what Benson even said.)
I do think Congress will sooner or later have to step in. The SC keeps making rules no one can understand and that don’t make sense in light of current technology.
Patent Bob, why do you think we should protect business software under the patent laws?
Why not?
After all, Congress expressly created a limited defense for a subset of such claims.
You do realize that if your view were to be the correct one, Ned, that Congress would not have even needed to create a defense and instead would have simply declared: “No business method patents.”
They did not do that, now why is that?
Anon, can we not distinguish between protecting the software and protecting the business method?
Absolutely.
See link to patentlyo.com for starters.
Then let’s remember that software is NOT the execution of software.
Software is a machine component, a manufacture and machine component made by the hand of man that just so happens to be in the form of “written matter,” but that is squarely within the Set C exception of printed matter for which the patent laws were meant to protect (having met BOTH prongs of 101: the right utility and being of a broadly defined statutory class).
OK, then.
May I suggest that we should allow infringement only with respect to making and selling the software, not using it. Using it will naturally protect the business method as opposed to protecting the software.
I think this is what Congress really had in mind when it protected software with copyrights. We might extend that work just a bit further to include functionality, but only in making and selling copies.
I cannot square what you are seeking here with the very basics of what each different IP system is meant to protect.
You are – or should be – aware that an item may have more than one aspect to it, and it is the different aspects that earn different IP protections under the different IP laws, right?
You seem to want to ig nore that very basic item and want an ONLY “either or” in relation to something that has multiple aspects that PROPERLY are covered under multiple (and different) IP laws.
I do not see you offering any rationale for doing this. Is your dogma that overpowering to your sense of reason that you do not see that you want to misapply multiple sets of IP laws in order to reach your desired ends?
(plus, you still have not addressed the direct and simple point I presented at 3.2.1.1 – yet again)
anon, we cannot permit patents on business methods.
At the same time, I see that people who develop software even for existing business methods need protection against copying new and unique algorithms embodied in their code. I think we might expand copyright protection just a tad so that the protection extends not only to literal copying, but to copying the new and unique algorithms embodied in the registered code.
So we probably have to have an examination along the lines of a patent examination in combination with registration of the code. The requirement for registration would eliminate to some degree people who sketch out ideas for new business methods on a piece of paper and get a patent claiming they are only protecting their investment in software when they are not.
Your “mantra” overcomes any sense of reason for you Ned.
Once again – pay attention to the basics.
If you find yourself wrecking those basics, and the direct and easy answer as to why is that your Windmill chase against business method patents is to blame, then deal directly with that item.
Software is a machine component
So is a book of recipes readable by a robot (according to your theory). But that book is ineligible for patent protection.
squarely within the Set C exception of printed matter
The “set C exception”! Right. Super persuasive stuff.
Here’s a prediction for you: 2016 is going to be an even worse year for software patents than 2015. And 2017 is going to be worse still. If you want to get ahead of the game, start from scratch and design your awesome government-administered system that grants “rights” to logic for limited times. That’s where this is heading because that’s the only result that doesn’t amount to a massive entitlement to the already wealthy gifted by some clueless judges who are so dense that they “have no idea” how their brain recognizes a face (but at the same time they understand that their lawyer friends will make more money if they continue to coddle them).
“so is a book”
S I G H
Aside from the obvious C R P of trying to conflate Useful Arts and Non-Useful Arts (yet again), Malcolm eagerly (yet again) ig nores the “functionally related” aspect that distinguishes Set B printed matter from Set C printed matter.
Funny that – after having my long ago post recently reprinted (after he asked for it), and he (yet again) F A I L I N G to offer any reasoned, objective, legally based response to that item, AND recalling his own volunteered admission as to knowing and understanding the controlling law of the exceptions to the judicial doctrine of printed matter, ALL that we get from Malcolm is the same bankrupt attempts at obfuscation, and the attempted “class w@rfare” wealthy gifted mantra – on a form of innovation that is easily most accessible by the opposite of the wealthy gifted (a dichotomy he refuses to acknowledge, let alone explain)…
Nice ecosystem Prof.
You want to control my posts, yet the Aegean stables of what you allow remain in a pre-Herculean state.
“anon” a form of innovation that is easily most accessible by the opposite of the wealthy gifted
Like Kevin Roe?
ROTFLMAO
??
You are not even close to hitting the point with a single counter example like that.
Of course, you already knew that, right?
a single counter example
LOLOLOLOLOLOLOLOLOLOLOLOL
^^^ are you done kicking dust? Want to return and address the actual point supplied?
I know teapots exist, I’ve got one in my house. Therefore the celestial teapot must exist as well.
I do wonder what it is that you have brewed in that teapot of yours, newbie.
😉
“They did not do that, now why is that?”
The gubmit works slowly.
LOL – connect the dots 6
(and you seem to work even slower than the “gubmit”…)
Ummmm…. there is no such thing as a “design patent troll”. If I’m wrong, cite me an instance, just one instance.
Perry,
All that you are seeing the usual “chum” churners that this ec(h)osystem seems to love to propagate.
Perry, define “troll.”
link to en.wikipedia.org
“In pejorative usage, a patent troll is a person or company that attempts to enforce patent rights against accused infringers far beyond the patent’s actual value or contribution to the prior art.”
Seems to me that ALL wielders of design patents are trolls under that definition.
“Seems to me” that – through the lens of the accused infringers (regardless of patent validity), that ALL patent holders are “Tr011s.”
Which reminds me – it’s a new year and we have YET to see the Executive Office response to the anti-propaganda, necessary-correcting-“Tr011” request from Ron Katznelson.
Where is the umbrage? Or does that “desired ends” make the means of propaganda somehow “ok”…?
(seems to be a common theme…)
It is unfortunate that, in my view, Samsung continues to pollute plausible arguments with an absurd argument in this case. Here, that an ornamental design “cannot include concepts, shapes or colors.” That is so incredulous that thought perhaps it was a typo when I first read it in their arguments. Eliminating design patenting of “shapes” would, of course, eliminate most [and often the most important] ornamental design patents.
Yes, the Fed. Cir. handling of both design patent claim interpretation issues and design patent 103 issues is a mess, but those issues were already blown below in this case.
P.S. From now on it seems foolish for design patent suit defendants not to take those two issues to an IPR, where they have proven vastly more likely to get more serious consideration.
Samsung: an ornamental design “cannot include concepts, shapes or colors.”
It’s not at all clear what the phrase “cannot include concepts” is supposed to mean in the context of a drawing that describes an ornamental design. Regardless, Paul, I agree with you that excluding “shapes and colors” from ornamental design drawings seems …. not right. I wonder what Samsung’s attorneys were thinking when they came up with that silliness? Maybe the idea was that if the only “innovation” in the design is to designate some new color, then the design is per se obvious? Or that — for similar reasons — you can’t use the design patent system to monopolize, e.g., “a rectangular display” or a “triangular button” or any other pre-existing shape as “affixed” to the latest display/button/whatever technology (whatever that technology might be)?
They may be conflating some Trademark issues into the design patent. T-Mobile recently threatened another company because it had the same color of pink, claiming they owned the color as a trademark. AT&T has, if I remember correctly, done some similar things over blue and white.
Part of it I think is they want to remove things that were done not for aesthetics but for practical reasons (rounded corners for example are primarily to make it easier to get the phone in and out of your pocket, not for aesthetics, square buttons are just how we do buttons, all the way back to the type writer, etc). Not sure why it’s worded like that, IANAL but even I think it’s less than well articulated in that sentence.
Paul, the Federal Circuit’s handling of design patent claim construction and 103 is far from a mess. They’ve greatly clarified the former in Egyptian Goddess and Ethicon, and the latter is quite clear from cases like High Point. They’ve come a long way, baby.
Perry, I hope you are right, but Ethicon and High Point are only panel decisions, and thus cannot overrule prior panel decisions. Also, has the Fed. Cir. yet even clearly admitted that KSR applies to 103 decisions on design patents, much less applied KSR, even though the same 103 statute applies?
Paul, what prior panel decisions are you worried about? Ethicon didn’t “overrule” Richardson, but it greatly clarified it. Nobody would dare cite Richardson for the position that you must “factor out” so called “functional” elements. In fact, Samsung didn’t even mention Richardson in its cert petition.
Regarding KSR, since it talks about 103 it certainly applies to design patents, the same way Graham v. John Deere applies to design patents, the same way Markman applies to design patents. But since KSR was all about utility patents, there’s hardly a one-to-one correspondence with design patents, just like it’s impossible to directly apply Markman to design patents since in the latter there’s only one claim and there are no words in a design patent to interpret. The lower courts struggled with Markman and design patents until the Federal Circuit (en banc) settled the issue in Egyptian Goddess by saying that for design patent claim construction, just look at the drawings.
I’m sure defendants have argued that KSR applies to design patents, but no one to date has suggested a sensible way to do that. In reading the KSR utility patent case, there is simply no logical way to superimpose its findings onto design patents, which is why it hasn’t been done. I also note that in the Hunter dog-jersey case, the patentee filed a cert petition, (weirdly) arguing that the Federal Circuit should be reversed in its finding that two design patents were invalid for obviousness because it didn’t apply KSR. It was a weird position for a patentee to take because if KSR’s literal language were applied in that case, the patents would have been more clearly invalid than they were. BTW, the SCOTUS denied that cert position.
In addition to all that, the courts have developed over the years a logical way to analyze design patent obviousness, using Rosen, Durling, High Point, and others. These cases take into account that design patents ain’t utility patents.
OK so design patents are to protect design ie appearance. But not just any old appearance, right? Only aspects of appearance that are new and not obvious.
In that case, I don’t see any alternative but to present the court (or the jury) with three pictures in a row, namely, the closest prior art, the patent drawing and the accused infringement. Ultimately, only if the accused infringement is “closer” to the patent drawing’s design than is the closest prior design can there be any question of infringement. If the accused embodiment is further away though, no infringement. How else can one design the ultimate legal question, in a way that is both accessible to a court or jury, and fair to both the design owner and the accused infringer?
But if there is another way to do it, I should be interested to hear about it.
For example, in Europe the test is:
“The scope of protection conferred by a Community design includes any design which does not produce a different overall impression on an informed user, taking the degree of freedom of the designer into consideration.”