Animated Design Patents

Guest Post by Sarah Burstein, Professor of Law at the University of Oklahoma College of Law

Wepay Global Payments LLC v. PNC Bank, N.A. (W.D.Pa. June 1, 2022) [wepayDecision]

Companies associated with William Grecia have filed over a dozen cases alleging infringement of design patents for “animated graphical user interfaces.” A judge in one of those cases, Wepay v. PNC Bank, recently issued a decision dismissing the case.

The patent asserted in that case, U.S. Patent No. D930,702, was issued in 2021 and claims a “design for a display screen portion with animated graphical user interface.” Wepay alleges infringement of the second embodiment, which includes three images:

Consistent with the USPTO’s rules for “changeable computer generated icons,” see MPEP § 1504.01(a)(IV), the patent specifies that, “[i]n the second embodiment, the appearance of the     sequentially transitions between the images shown in FIGS . 3 through 5. The process or period in which one image transitions to another image forms no part of the claimed design.” Consistent with the USPTO’s general drawing rules, the patent disclaims all matter shown in broken lines “form[] no part of the claimed design.”

So what does this patent cover? According to the court, Wepay seemed to think its patent covered any app with a QR code that lets you send money to other people:

WPG maintains that both its patent and the PNC app include an icon array of three squares that simulate a QR code; both cycle to a functional screen where the user may choose to whom the money will be sent; and both conclude with the display screen with a display of a zero value, where the user may input the amount of money that the user wishes to send.

The court rejected that interpretation—and rightly so. It’s well-established that design patents cover the visual designs that are actually claimed, not the larger design concepts.

The court held that the claimed designs and accused design, shown below as shown in the complaint, were plainly dissimilar and granted PNC’s motion to dismiss.

In doing so, the court recognized that placement and proportion matter in design, noting that “[a]ny similarity between the two designs is limited to basic geometric shapes, but with notable differences in shape size and spacing such that no ordinary observer would mistake the Accused Design with the Asserted Design or vice versa.”

Some may argue that the court erred in considering the placement and proportion of the claimed design fragments, because matter shown in dotted lines “forms no part of the claimed design.” But even if other visual portions of the design are disclaimed, that doesn’t mean courts have to treat the claimed portions as free-floating motifs. (Indeed, sophisticated design patent owner Nike has recognized that placement matters, even when dotted lines are used. See this PTAB decision at 10-13.)

I’ve explained here, placement and proportion are essential elements of design. The differences between the claimed and accused designs here are an excellent example of how different a single motif (e.g., each of the three squares in figure 3 and in the accused design) can look in the context of the design, depending on its proportion to the other elements and where it is located on the screen.

Before diving into the merits, however, the court expressed some doubt over whether infringement was even possible in this case:

[T]he Court notes that the ordinary observer test focuses on a hypothetical purchaser induced to buy a product with an accused design over an asserted design. The cases cited by the parties likewise address designs where there exists a consumer and/or purchaser at play. However, neither the cited cases nor this Court’s research reveals a case where, like the instant matter, the consumer has not voluntarily chosen the design at issue. Instead, the Accused Design is incidental to the PNC customers utilization of the mobile application. The Complaint does not allege that a purchaser would have been or has been involved with the Accused Design. Further, the Complaint does not allege a purchase or transaction by a consumer with regard to the Accused Design over the Asserted Design. Thus, the ordinary observer test would seem not to fit squarely with the designs at issue, and WPG would not be able to assert a design patent infringement claim.

Even though it’s dicta, the court’s suggestion that a design patent owner must plead “a purchase or transaction by a consumer with regard to the Accused Design over the Asserted Design” is worth further discussion.

Like other patents, a design patent is infringed when someone makes, uses, sells, offers to sell, or imports the patented invention without permission. The test for design patent infringement doesn’t change that. It just tells us when someone is making, using, selling, offering to sell, or importing the patented design.

The test for design patent infringement is a test of visual similarity. The “ordinary observer” part just tells us how similar the designs must be. (See this article at page 177.)

So, under current law, no sale is required, let alone—as the court seems to suggest—a direct sale to the end user, “with regard to the Accused Design over the Asserted Design.” Indeed, because there is no working requirement for design patents, there may not be a product embodying the claimed design available for sale.

All the defendant has to do is make (or sell, etc.) a product that looks “the same” as the claimed design. (For more on how the test for design patent infringement works, see this essay or Chapter 12 of this free casebook.)

Because Grecia-related companies have filed so many similar cases, it seems likely this decision will be appealed. It is definitely one to watch.

61 thoughts on “Animated Design Patents

  1. 8

    Speaking of design patents, I am now on the 5th consecutive “Non-Final” Office Action in one application. I say “Non-Final” because each time I received a “Final”, it was withdrawn in view of the AF reply I filed, and a new non-final office action was issued citing new references (NF, F, NF (after withdrawal of F with new references), F, NF (after withdrawal of F with new references)). Five consecutive Office Actions with no RCEs filed.
    At some point, the phrase “compact prosecution” becomes a joke and this is simply abuse because the design art units won’t implement In re SurgiSil.

    1. 8.1

      Wow – at this point I would be demanding that any next action (F, modified NF, true NF) address the substance of the arguments provided, as that substance applies to any and all art that the Office may choose to use.

      It also may be time to call the Ombudsman.

      1. 8.1.1

        Have you (or anyone you know) found the Ombudsman to be helpful?

        1. 8.1.1.1

          Yes – once.

          It was sad that it had to come to that, as not evident with my style here, I am most often able to develop excellent relationships with the examiners I interact with.

    2. 8.2

      Time for a pre-appeal brief request for review?

      1. 8.2.1

        Not sure about Design land, but in Utility land, those have diminished in usefulness (greatly) since their introduction.

        6 and I were having a spat about ‘original purpose’ recently — and the notion that THAT original purpose would even be attempted to be dismissed should tell you how much that Avenue has degraded.

        1. 8.2.1.1

          I have had some success with this approach. In this situation, with so many AF rejections, it seems that it would have a high probability of success, assuming the rejection being appealed is meritorious…

      2. 8.2.2

        Seems to have been pretty successful getting the examiner to back off final rejection without one. What is needed is an allowance.

        1. 8.2.2.1

          MCI,

          Getting the examiner to “back off” is not particularly helpful.

          Getting to allowance is of course the best aim. But what appears here is a level of gamesmanship that many of us practitioners run into now and again (sadly, there appears to be relatively little control over this). This most often happens when a supervisor (off the written record) tells the examiner that the application will not BE allowed, and the examiner has to come up with B$ rejections (time and again — no matter how many times “Final” is backed off from) until the applicant is worn out.

          1. 8.2.2.1.1

            Argh – just got an 80+ page OA from one of those few…

            1. 8.2.2.1.1.1

              What’s Guiness’ record for length of an OA ?

              1. 8.2.2.1.1.1.1

                Not sure about Guiness, but if I recall correctly my personal largest was in the 130’s.

                1. Does that page length include the Examiner copy-and-pasting your arguments into their “Response to Arguments” section?
                  Happened to me not too long ago. That added nearly 40 pages to the Office Action.

                2. ipguy,

                  While I do see larger “copy and paste” of my prior arguments in actions, this is rare, and to answer your question here: no.

  2. 7

    Powerful stuff, illustrates some interesting opportunities……

  3. 6

    I wonder if they also filed a utility application – they should have. And whichever law firm prepared this design application should be ashamed of themselves for allowing these figures that have no features within dashed lines to be submitted to the PTO (it’s like this embodiment is nothing at all).

  4. 5

    I don’t understand: if the dashed lined are disclaimed, how does figure 4 show anything to protect? If we ignore the dashed lines, it’s a blank screen, which of course is known from well before the filing of a design patent application by these rubes.

    If I were the judge, I’d have dismissed with prejudice and awarded attorneys’ fees to the defendant.

    1. 5.1

      The pictures are supposed to be frames of an animated icon, so I’d guess I’d interpret that embodiment as displaying something else between the three little boxes and the dollar amount.

      That said, I’m also not sure this string of figures can fairly be said to comprise a purely ornamental “computer generated icon” vs. a GUI. And a largely functional GUI at that.

      1. 5.1.1

        Functional…

        Would that be like “tire tread” functional?

        1. 5.1.1.1

          Yea, closer to “tire treads” than “automotive grills,” in that tire manufacturers commonly claim/advertise their tread pattern improves traction vs. just looks pretty. Automotive grill manufacturers, otoh, normally don’t suggest their molded plastic channels air any better than other design.

          1. 5.1.1.1.1

            I hear you.

            Normally this would remind me of the notions and considerations between patenting and copyright (vis a vis software: in that software has different aspects that garner different protections under the different IP regimes).

            But Design Patents….. ech. Who in the world thought shoe-horning this into the Utility Patent world was a good idea missed the boat that day.

    2. 5.2

      It is interesting, that one figure which is all dashed lines. It illustrates environment and has no meaning unless considered beside or w/ the adjacent drawing. A drawing fig in a des. patent which has only dashed lines in the entire drawing seems out of the ordinary, but… can you see value in doing that ? Is there anything “wrong” with a fig which is entirely composed of dashed lines only ? On one hand, it provides absolutely nothing. Could the PTO adopt a rule, which essentially declares any drawing comprised of dashed-lines only, as being frivolous and reject any drawing which does not contain solid lines sufficient to describe “something” ? Maybe

      1. 5.2.1

        An all-broken line figure is part of the disclosure. It enables the applicant to amend the drawings during prosecution to convert some/all of the broken lines to solid lines. Also, it enables the applicant to file a continuation converting all/some of the broken lines into solid lines.

        1. 5.2.1.1

          Interesting.

          Has anyone (to your knowledge or experience) challenged the changing of broken lines to solid lines (without other indicators in the as-filed application) on the basis of possession?

          That seems like a rather substantive change – equivalent to adding new matter.

          1. 5.2.1.1.1

            Check out Ex Parte Giza, Appeal 2017-000442
            Application 14/427,215

            1. 5.2.1.1.1.1

              Application 14/427,215 does not show an appeal in its file wrapper.

              The e2e dashboard does not allow a search by the 2017 number (I am guessing – as that search shows no cases).

            2. 5.2.1.1.1.2

              Got it – application is 14/437,215 – will review this evening.

              Thanks!

            3. 5.2.1.1.1.3

              Good morning Perry.

              Can you explicate what you think Ex Parte Giza provides?

              I cannot make the leap from the topic here to the decision there.

              1. 5.2.1.1.1.3.1

                The Board in Giza said that converting solid lines to broken lines (which broadened the claim) was ok; the written description requirement was satisfied. By the same logic, broken lines can be converted to solid lines, as the MPEP says (Chapter 1500).

                1. hit count limit

                  Your comment is awaiting moderation.

                  June 23, 2022 at 3:33 pm

                  quick scan of MPEP 1500 does not help.

                2. spoke too soon – still cannot find the case, but MPEP does provide as you indicate, even though I would have thought differently — I would have though that an original filing with broken lines would serve as a disclaimer that could not be recaptured.

                  The analogy to utility patents does not quite work, as that analogy would be closer to the faux pas of Applicant Admitted Prior Art, and while not “new matter,” such would NOT be able to BE the claim.

        2. 5.2.1.2

          yeah, this came up a while back, ugh, juggling so many things here….

          I think the question was, what exactly does an all-dashed figure, as “original disclosure”, teach the skilled one? Does it evidence possession of any and all changes whatsoever later made by Applicant during prosecution, of dashed to solid lines ? New matter stuff. Filing more drawings initially seems to be the best answer, if a pic is worth 1000 words, the way to lengthen the description, scope, metes and bounds, is with more drawings.

          1. 5.2.1.2.1

            note to self: Is it fair to say, that most who run into trouble with Design patents, merely did not file enough drawing sheets originally?

            1. 5.2.1.2.1.1

              Certainly, filing more drawings is a good solution to written description challenges. This is routinely done in many design applications by using an Appendix that can add as much disclosure as you like, without claiming it. (n.b., the Appendix is never published as part of the design patent, and there’s no way to tell from the face of the patent whether an Appendix was even filed).

          2. 5.2.1.2.2

            Think of the all dashed lines as disclosure, akin to the detailed description in a utility patent. In the latter, there is no requirement that the applicant claim everything disclosed, he/she can claim what they regard as their invention. By the same token, a design applicant can claim what they regard as their invention (design), without requiring them to claim everything disclosed. And both applicants can file continuations claiming any portion of the invention/design disclosed but not already claimed.

        3. 5.2.1.3

          Yeah, on one hand dashed lines can be used to illustrate environment, but also for a long time can be changed to solid during prosecution, if need be. In a sense, dashed lines represent “subject matter disclosed, but not claimed”. Making dashed lines solid during prosecution seems the same as amending claims during prosecution of a utility spec, by incorporating disclosed features from the orig spec into the claims, per usual.

          My mind wanders….. wasn’t there a notion about subject matter thats disclosed in a patent, but not claimed, is dedicated to the public ?
          It seems odd to suggest, but, if an Applicant in a design patent chooses to not make certain lines to be solid, but leave them dashed, that by not converting them to solid they are dedicating that described by the dashed lines, to the Public ? It would seem so, if dashed lines represent subject matter disclosed, but not claimed ! Prosecution history estoppel, from not converting dashed to solid lines. Its probably of no significance, but can it be said, that which is defined by dashed lines in a Design patent, is dedicated to the Public ?

          1. 5.2.1.3.1

            As in, the entirety of FIG. 4 is dedicated to the Public, because it contains only unclaimed disclosure.

            1. 5.2.1.3.1.1

              As noted above, I view this as different than merely “unclaimed” matter.

              The choice to submit with broken lines is a declaration by the patentee that the broken line material IS NOT the inventi0n.

              To me, such is akin to the patent profanity of Applicant Admitted Prior Art.

              1. 5.2.1.3.1.1.1

                Take it to the extreme……. what if Applicant submits a design application containing drawings having broken lines, with no solid lines in any of the figures ? I’d view such hypo filing as a disclosure, with nothing claimed. Most likely, the Ex would demand that something be claimed, since Applicant failed to “particularly point out and distinctly claim” that which is regarded as “invention”. The claim is meaningless without at least some solid lines !! Can the same be said of a single drawing sheet comprising only broken lines ? It sure looks like unclaimed, yet disclosed subject matter – gift to Joe Public. Is FIG 4 in the subject patent free for anyone to make, use, sell ? I won’t even get into enablement, but they didn’t tell me how to make it ! No problem provided the skilled one can do it, but what if special moulding techniques are required, etc. to produce a given design, and nowhere in the design spec is it taught how to make it ? ok, maybe that’s weak, but its there…. “enablement in design cases”

                I see submitting with broken lines (when at least something is particularly pointed out and distinctly claimed), not so much as a declaration that the broken line material is not the invention, it is just not the “claimed invention” at the time it is viewed, but as u know under design practice it is permissible later “if need be” claim some of the unclaimed disclosure by solifying some of the broken lines. So, broken lines are “potentially claimable” disclosure. But I think one must at least claim….. SOMETHING !!!!!

                1. The all-broken-lines of Fig. 4, it must be remembered, is only one figure of an animated GUI that requirees the 3 figures to be read as a sequence. So, it’s not dedicated to the public unless the entire claim (all 3 figures) is in broken lines, which it isn’t. And of course nobody files all-broken-line figures. While it’s not easy to interpret the scope of this claim, one possibility is that anything (or nothing) can go between Figs. 3 and 5.

                  And don’t get me started on enablement. No design patent disclosure ever teaches one skilled in the art how to make and use the invention. The enablement requirement, like much of 35 USC, was written with utility patents in mind. Courts should interpret the enablement requirement in design cases to say that the disclosure should enable a designer of ordinary skill to understand the design, or some such (but no court has modified the enablement requirement when considering a design disclosure).

                2. Thanks Perry – yet again your observation (read the figure in context of the other figures) is helpful.

              2. 5.2.1.3.1.1.2

                The enemy is breadth. Ref US 6,593,495, the Ex phoned me to make a deal during prosec. Before discussin the case he informed me of the gold medal he received frm the Commissioner himself the week prior. I gave my congrats. He said he wanted to allow the claims, but that they were “too broad.” I informed him there is no breadth statute, but 102, 103, 112 are available. He didn’t like that, no deal was reached, but shortly thereafter allowance came with claims in their as-filed form. The Gent had 40 or 50 years exp. at the PTO, why did “breadth” seem to annoy him, I wondered.

                Fast forward to US pub 20050044018. (There were about 5 like cases, this might not be the one but exemplifies the subject matter) The Ex phoned for authorization to do an amendment to put the case in condition for allowance. I authorized, since it was minor, and we rejoiced. The following week, phone rings and its the Ex, an SPE, and someone else high up, it may have been the Group director. Informed me that no, we can’t allow this. The words I remember are “it is too broad”.

                Fast forward, Nuitjen, Mayo, Alice, & cet…. Part of me sees all this as part of the “War on Breadth”, because breadth is seems to be always lurking behind all the arguments, or is the reason someone became upset – “the patent is too broad.”

                With Design practice, we haven’t seen much change, along the lines of decreasing breadth. Is it “gambler’s fallacy” that I should maybe think “We’re due to see some like changes in design practice re breadth as we’ve seen in utility cases ?” I don’t know, but it seems “likely.”

                1. As to “With Design practice, we haven’t seen much change, along the lines of decreasing breadth

                  You DO have the recent In re Surgisil, which APPEARS to make it so that limiting breadth to the stated item (or type) of manufacture disqualifies most any art outside of that area.

                  Your thoughts….?

  5. 4

    Is there not a serious problem of an inherent inconsistency between the design patent Fed. Cir. case law that says the claim scope of a design patent is narrowly limited to what is shown in all of its drawn solid lines, versus a much broader and looser Fed. Cir. “ordinary observer” comparison infringement test? It strikes me as an inherent “nose of wax” invitation.

    1. 4.1

      It makes zero sense.

      1. 4.1.1

        I WAS TOLD ALONG TIME AGO IVEY WAS MY PROBLEM. LI A R VICK SAID I WAS WRONG. NOW I KNOW HE MAY EVEN HAVE BROKE INTO MY HOUSE WHEN MY SON COULDN’T. HIS TIME CARDS WILL TELL THE REAL STORY ABOUT WHO BROKE IN.
        KRISTIE CALLED FROM ANOTHER NUMBER SHE WAS FISHING OR ,,,

        1. 4.1.1.1

          Where’s Malcom when we need him?

          1. 4.1.1.1.1

            1. 4.1.1.1.1.1

              The board wouldn’t permit me direct reply to you query for thoughts on Surgisil, so maybe I shouldn’t….

              My thought is…. yes, its more evidence for the silent War on Breadth being waged.

              Although wasnt that case concerned with prior art for patentability purposes ? If the prior art patent referenced in Surgisil were in force, does that decision mean the prior art patent holder wouldn’t be able to sue S for their implant based on their design patent for the tool ?

              1. 4.1.1.1.1.1.1

                Thanks Chrissy – to add a reply when the numbers run out, just reply to the last instance of numbers – it will no longer nest, but will be placed in order below.

                The concern of the case was indeed different – but as you may well be aware, the law of unintended consequences may play itself out in that selecting merely down to what article of manufacture may provide for proliferation of the SAME designs.

                This may well be tied to the fact that the law as written (and interpreted) uses express words such as “article of manufacture” and a prohibition against a design per se (a na ked design that exists regardless of what article of manufacture could be adorned with the design.

                It’s a bit of an interesting twist to the (mistaken) notion that design patents must be totally d1v0rced from any aspect of functionality. Understanding this let’s one understand that design upon – or perhaps more accurately – PER manufacture has been ‘judged’ to be patentably distinct based on nothing more than distinct manufactures.

              2. 4.1.1.1.1.1.2

                That’s exactly what it means. It was a 102 rejection, and in design patent law the test for anticipation is the same as the test for infringement. So since it didn’t anticipate, the prior art (if it were a patent) would not be able to hold Surgisil liable for infringement, since the AoMs are different.

                1. hmmm…. I’m thinking I might be free to take the next patented design of an auto body by HugeCo. X, and make little key fobs that look just like the patented design, since, its not a car, its a key fob. Or, take a cool architectural design for a house, mass produce smaller versions and sell as chicken coops. etc. Take Apple’s coolest gadget covered by design patent only and turn it into a cigarette lighter and sell it. Designer Jewelry designs ? I’ll add a treble hook and sell them as fishing lures……. These examples are weak but there’s probably better ones. I don’t know who would be licking their chops over that decision, but maybe some are.

                2. I like those instances a lot… such as the Kitchen-Aid(TM) mixer design… where the article itself is claimed as the business’ trademark. The TM route gets ya a lot longer term, for a lot less quid. I try to wedge that idea in to client discussions, but they think I’m greedy and am merely trying to enrich myself. haha, I don’t even do TM’s.

  6. 3

    >that doesn’t mean courts have to treat the claimed portions as free-floating motifs.

    The patentee better hope it doesn’t; I’m sure I can find 3 boxes and a dollar amount pre-2020.

  7. 2

    “ display screen with a display of a zero value, where the user may input the amount of money that the user wishes to send.”

    That’s not “ornamental”. It’s functional. What a pack of gross incompetents.

  8. 1

    Design patent “law” is a joke. That said, these patentees and their attorneys should be sanctioned. Frivolous and disgusting.

    1. 1.1

      The Prophet – I agree that design patent law is a mess.

      1. 1.1.1

        Well look at that – all three of us in the same bucket here.

        1. 1.1.1.1

          We probably all agree that murder is a crime, too. Not sure that’s significant of anything.

          1. 1.1.1.1.1

            That a part of “your bucket” may edge towards the center is indeed something to note and celebrate.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture