New design patents have a term of 15 years from patent issuance — that is a 1 year bump from the 14 year term familiar to many patent attorneys.  The straight 14-year term took hold in 1982.  In the years leading up to 1982, most design patents also had a 14 year term, but applicants had the option of instead obtaining a term of 7 years or 3½ years at a lower fee.  In 1980, all design patents had an application fee of $20, and the issuance fee was $10, $20, or $30, depending upon whether the applicant wanted 3½, 7, or 14 years of patent term.  In 1930, the prices were $10, $15, and $20.

The chart below is a bit hard to read, but it basically shows the percentage of design patents associated with each of the three potential patent terms. The basic result is that in the 1910s, folks were obtaining all three sizes at roughly equivalent rates; By 1940, the short 3½ year term had become most popular; Then, by the 1970s the overwhelming majority of applicants were paying the extra $10 for 14 years.

This is part of a larger project that I’m working through on design patents, and I’ll be able to fill-in the gaps of the chart at a later date.  I’m downloading the TIFF images for these patents; running through OCR  software and then parsing that text output.  It is a bit of a process, and I probably need a multithreaded approach. 

The original design patent Act of 1840 included a 7 year term. I believe it was the the 1861 Act that added the spread term, and included a respective cost of  $10, $15, and $30 with an optional seven additional years.

Mojave Desert Holdings, LLC v. Crocs, Inc., 2020-1167 (Fed. Cir. 2021) [Merits Decision][Substitution Decision]

In this non-precedential opinion, the Federal Circuit has sided with the patentee CROCS — upholding the design patent for its really amazing footwear. D517,789.

The setup here is an inter partes reexamination filed by Dawgs back in 2012 (now Mojave Desert).  During the reexam, the examiner searched the Wayback Engine (Internet Archive) and found images on the crocs website that predate the patent application filing.  The examiner relied upon those pre-filing disclosures (images below) to reject the patent claims as anticipated.  However, the PTAB rejected that analysis and instead upheld the validity of the issued patent.

Here is the problem — the patent includes claim features on the bottom-side of the shoe, and Fig 11 does not show the bottom of the shoe.  On appeal, the Federal Circuit affirmed with only cursory analysis: “Having reviewed the Board’s decision and the record, we discern no reversible error.”

Mojave’s basic argument is that nothing on the bottom of the shoe was really claimed. Mojave’s briefing included the figure below, where it argued that the red lines were the only claimed portion — and those were adequately shown in the Fig 11 prior art. (Sorry color blind friends).

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An aspect of the case also involved whether Mojave could stand-in for the original IPR petitioner Dawgs.  Dawgs went bankrupt back in 2018 and stopped participating in the IPR.  Mojave bought up various aspects of Dawgs rights.  However, the PTAB refused to allow Mojave to participate in the reexam. On appeal here, the Federal Circuit found that Mojave was an appropriate substitute.

In contrast to Agilent, the sale … clearly transferred all of U.S.A. Dawgs’s assets and claims and did so using broad language. U.S.A. Dawgs did not need to enumerate each of its assets individually to effectuate the broad transfer. U.S.A. Dawgs dissolved and did not continue to participate before the Board. Under the circumstances, the transfer of all assets on its face included the rights in the Board proceeding.

= = = =

The briefing involved substantial discussion about who should count as the “ordinary observer” for both infringement and validity consideration.  In a prior case involving the patent, Crocs had argued that the ordinary observer was an “Impulse Buy Purchaser.”  That low-standard made it easier to argue infringement since – at a quick glance the accused product looked so similar.  In this case, however, the patentee changed its tune and focused on detailed and small differences that would not have been observed at a quick glance.   The court did not reach this issue, which might have applied judicial estoppel.

Hafco Foundry and Machine Co. v. GMS Mine Repair and Maintenance, Inc. (Fed. Cir. 2020).

Hafco’s US Design Patent D681,684 covers an ornamental design for a “Rock Dust Blower.” GMS was Hafco’s distributor. After a breakup GMS started selling its own version.

The jury awarded a verdict of $123k and the district court issued a permanent injunction. However, in a post verdict ruling, the district court remitted the damages award to zero and ordered a new trial on damages.  The court also denied GMS’s motion for judgment as a matter of law (JMOL) on non-infringement and GMS appealed.

The basic question in the appeal is the extent that functional elements of the design can be protected by design patent.  Unlike copyright, design patent law does not have a statutory requirement that ornamental features of a design be separable from the functional elements.  I have never used a “rock dust blower”, but nothing in the design shown above appears purely decorative.  At the same time, I can imagine many ways to make a fully functional and relatively inexpensive “rock dust blower” that use different design features than those drawn by the patentee here.  Unfortunately, during the trial (or pre-trial) GMS never pointed to (or provided evidence on) the particular functional aspects of the design here that should have been excluded. As such, the Federal Circuit found the issue waived

Because GMS never made this non-infringement argument at the district court, nor presented relevant evidence on the functional or prior art aspects of the ‘684 patent to the jury, GMS has not preserved the argument for appeal.

Slip Op.

Jury Instructions – Functionality:  A jury is supposed to be instructed on the law.  Here, GMS asked for a jury instruction that “a design patent protects only the non-functional aspects of the design as shown in the patent drawings, if there are any such nonfunctional aspects.”  The did not use GMS’s proposal and GMS did not subsequently object to the Jury Instructions provided by the court. That lack of second-round objections to jury instructions is required under FRCP 51(d)(1) unless the instructions fall under the “plain error” exception of FRCP 51(d)(2).

(2) Plain Error. A court may consider a plain error in the instructions that has not been preserved as required by Rule 51(d)(1) if the error affects substantial rights.

On appeal, the Federal Circuit found no “plain error” and in fact no error at all.  The court particularly walked through and approved the following jury instructions:

Ordinary Observer:

An ordinary observer is a person who buys and uses the product at issue.

The appellate panel found no error with this instruction.

Differences from the Prior Art:  Under Egyptian Goddess, the infringement test compares the design patent images with with the accused product while keeping the prior art in-mind.  Here, for instance, the 55 gallon drum used in the patent is at least prior art.

The jury was not properly instructed to “familiarize yourself with each of the prior art designs that have been brought to your attention.” Rather, the court simply asked the jury to compare the design patent to the accused product:

You must only compare GMS’ accused rock dust blower to the ’684 design patent when making your decision regarding infringement.

On appeal, the Federal Circuit confirmed that this is a special case since the accused infringer – GMS – did not present any prior art for comparison. “Given that there was no prior art introduced at trial, no attempt by GMS to introduce the prior art, and no proposed jury instruction on this issue, the purported exclusion of this instruction cannot be error.”

Affirmed.  In hindsight, this case looks like a failure of lawyering by the defendant.  However, part of the issue here is that we were talking about only $100,000 and the level of lawyering required for a strong appellate case costs more than that.  In addition we have a situation where it sure looks like the defendant intentionally made a knock-off product.

Crouch’s Advice: If you are going to litigate a design patent, hire someone who has previously litigated a design patent (even though there are not that many folks).  If you already have litigation counsel that you trust, have them bring in an additional design patent litigator (likely from another firm) to add to the team. The difficulty here is that design patent law is different enough to get folks in deep trouble who assume they understand the process.

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Damages: Dissent by Judge Newman concurred with the opinion discussed above but also added her own opinion resolving the question of damages that was apparently not appealed. The jury verdict (image below) shows damages of $123k and were measured by GMS’s infringing sales under a profit disgorgement theory.  The problem though is that Hafco eventually elected to pursue damages based upon its own lost profits rather than profit disgorgement.  Clear error there by the jury and so it looks like it should require a new trial unless remittur works.

Remittur: When the jury verdict size cannot be supported by the evidence presented, the court may order a new trial (as here) under R.59.  In addition, the court can also offer the plaintiff the option to accept a lesser amount of damages – an amount that is supported by the evidence. This option is a remittur.  Here, the judge offered the Hafco a remittur of $0 in damages, which Hafco rejected in favor of a new trial.  In her dissent, Judge Newman suggested that the proper amount for Remittur would be $110,000 which (according to her) was the patentee’s undisputed lost profits.

Hafco suggests that remittitur to Hafco’s lost profits of $110,000 would be a more reasonable action than remittitur to zero, for $110,000 reasonably implements the jury’s verdict and intent. . . .

I would simply correct the district court’s judgment, and remit the damages award to the undisputed amount of $110,000. A new trial, on undisputed facts, is not needed to serve the purposes of the jury verdict.

Dissent.  On remand, the court may take Judge Newman’s arguments to heart and reconsider the new trial with a R.60(b) order.

= = = =

I also want to just note for a second that the lids here appear to have major differences in design.

Automotive Body Parts Ass’n v. Ford Global Techs, LLC (Supreme Court 2020) [19-__PetitionForAWritOfCertiorari]

Ford has implemented an aggressive strategy of patenting the various parts of its new vehicles.  Many of these new patents are design patents: Wheels; fenders; airbag compartments; grilles; bumpers; tail lights; headlights; console; hood; mirror; etc.

After an accident, a vehicle owner typically wants to repair the vehicle.  While repair of the vehicle may seem permissible under an exhaustion doctrine, the difficulty comes in when looking at individual parts. Repair of the vehicle might require replacement/reconstruction of a patent part (such as the side-mirror pictured above).  The repair industry (and insurance companies) would like to use less-expensive repair parts — one way is to buy off-brand parts — especially for lower-tech items such as a fender or headlight cover.  But, the design patents are preventing that from happening.

In its new petition for writ of certiorari, Automotive Body Parts Ass’n asks the Supreme Court should provide a broader view for the exhaustion doctrine:

Under the patent exhaustion doctrine, a patentee’s decision to sell a product exhausts all of its patent rights in that item. The unrestricted sale creates an implied license to use, which includes the right to repair. Analysis of whether a right to repair exists requires identification of the correct article of manufacture.

The Federal Circuit held that repair rights and identification of the article of manufacture should be determined solely by what is claimed in the patent. This holding allows a patentee to greatly diminish or eliminate the right to repair and allows improper broadening of design patent protection over unclaimed portions of a design. The question presented is:

How should the article of manufacture be determined when applying the patent exhaustion and repair doctrines in design patent cases?

These issues have already been discussed in some ways by the Supreme Court in Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336 (1961) and Aro Manufacturing Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964).  However, the petitioner largely sets these cases aside — arguing that design patents are particularly problematic — and that the Supreme Court can fashion a design-patent-specific remedy.

by Dennis Crouch

I have written a few posts about the design patent infringement case  Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc.  In November, the Federal Circuit vacated the lower court’s summary judgment of infringement — holding that logo placement in this case might allow the defendant to avoid an infringement judgment.  This holding is in tension with the court’s 1993 decision in L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (1993).

In the last post, I included an image of my Seirus glove liner.  My first update is that the glove liner has completely fallen apart — apparently it is a liner and not intended simply as a biking glove.

Second update is that Columbia (the patentee) has petitioned the court for en banc rehearing to address issues of design patent infringement.  Questions presented:

1. When conducting a design-patent infringement analysis under Gorham v. White, may a fact-finder consider the addition of brand names or other labeling on an otherwise infringing design?
2. When conducting a design-patent infringement analysis under Gorham v. White, should the fact-finder compare the overall appearance of the claimed design (i) to the overall appearance of the accused design, or (ii) to the overall appearance of the entire accused product, which may include aspects extraneous to the claimed design (e.g., logos, tradenames, color, size, etc.)?

[Columbia-petition].  The new petition added design patent expert Christopher Carani representing Columbia. The Court has requested a responsive brief from Seirus due January 30, 2020.  Several amici are also planning to submit briefs, although there is some fight over whether the court will allow them an extension of time.  Amici include a “Group of Interested Practitioners” including Tracy-Gene Durkin, Robert Katz, and Perry Saidman. The Industrial Designers Society of America, Inc. (represented by Damon Neagle) and Bison Designs / Golight (represented by Ian Walsworth) are also expected to support the petition. In opposing the extension, Seirus explained that “there is no reason a group comprised of at least seven design patent attorneys from at least six law firms cannot draft a 2,600 word brief in the time allotted.”  In my contrary experience, a group of seven patent attorneys rarely accomplish anything within the time allotted.

Logo Placement Relevant for Infringement in Design Patent Cases

Columbia Sportswear v. Seirus Innovative Accessories (Fed. Cir. 2019)

It is a bit chilly here in Missouri and so I wore my Seirus gloves that I purchased after the last-time I wrote about this case.

Note here that my gloves are the cheap liners, the lawsuit focuses more on the expensive gloves and clothing that have the heat-reflective material on the inner liner. My gloves also show a different pattern than the original accused HeatWave product.

In the case, Columbia asserted both a design patent (US.D657093) and a utility patent (US.8453270) and the case resulted in a partial victory for Columbia — Jury award of $3 million in damages for design patent infringement but a determined that the asserted utility patent were invalid.

The ‘093 design patent is directed to a “heat reflective material” as shown in the drawing above.  Columbia won its design patent case on summary judgment and then a jury awarded $3 million in damages.  On appeal, the Federal Circuit has vacated the summary judgment — holding that the district court improperly decided disputed issues of material fact reserved for a jury.

Design patent infringement is a question of fact. . . . The “ordinary observer” test is the sole test for determining whether a design patent has been infringed. Egyptian Goddess (Fed. Cir. 2008) (en banc). The test originates from the Supreme Court’s Gorham decision, which provides 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.” Gorham Co. v. White, 81 U.S. 511, 528 (1871)). . . . The ordinary observer is considered to be familiar with prior art designs, and “[w]hen the differences between the claimed and accused designs are viewed in light of the prior art, the attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design that differ from the prior art.” Crocs (Fed. Cir. 2010).

Seirus’ key argument here is that the location of its logo, coupled with differences in line thicknesses and uniformity raise questions of fact sufficient to get the case to the jury — so that a reasonable juror could find no infringement.  The district court disagreed with that argument — finding that  “even the most discerning customer would be hard pressed to notice the differences between Seirus’s HeatWave design and Columbia’s patented design.”

On appeal, the Federal Circuit has sided with the adjudged infringer holding that the logo should be considered as part of the non-infringement analysis. In L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed.Cir.1993), the Federal Circuit wrote that “[d]esign patent infringement … does not … allow of avoidance of infringement by labelling.” That decision led the district court here to come to the conclusion that it is “well-settled that a defendant cannot avoid infringement by merely affixing its logo to an otherwise infringing design.”

On appeal, the Federal Circuit instead distinguished L.A. Gear.

In evaluating infringement there, we explained [In L.A. Gear] that design infringement is not avoided “by labelling.” A would-be infringer should not escape liability for design patent infringement if a design is copied but labeled with its name. But L.A. Gear does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between
a patented design and an accused one. Indeed, the fact finder is tasked with determining whether an ordinary observer would find the “effect of the whole design substantially the same.”

Slip Op.

Regarding wave thickness, the district court held that thickness was not claimed in the patent. Obviously wrong because everything in the drawing is claimed.

[T]he claim of the ’093 patent is drawn to the “ornamental design of a heat reflective material as shown and described,” and Columbia’s design has uniform line thickness in every figure in the patent.

Slip Op. Note here that the district court cited to several decisions holding finding that design patents were not limited to “any particular size” and thus, for instance could simultaneously cover both a motorcycle for humans and one for Ralph the Mouse. 

Those precedents didn’t fit here because we’re not talking about the overall sizing but rather relative sizing and uniformity.

Finally, the district court also noted several other differences between the patent and the accused product, but found them each minor. On appeal, the Federal Circuit found the approach improperly piecemeal and did not properly consider overall visual impression.

[T]he district court’s piecemeal approach, considering only if design elements independently affect the overall visual impression that the designs are similar, is at odds with our case law requiring the factfinder to analyze the design as a whole. See Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1372 (Fed. Cir. 2006). An ordinary observer is deceived by an infringing design as a result of “similarities in the overall design, not of similarities in ornamental features considered in isolation.” Id.

Slip Op.  Thus, the case is remanded and will now likely go to a jury trial.

In the appeal, the defendant also argued that profit disgorgement under 25 U.S.C. § 289 should be determined by a judge rather than a jury.  The Federal Circuit noted that to be an important question, but did not reach it on appeal after having already vacated the infringement findings.

Note here that the ornamental design is directed to a heat reflective material -getting close to a design in the abstract. See Curver Luxembourg, SARL v. Home Expressions Inc. (Fed. Cir. 2019).

Federal Circuit Rejects Patenting Designs “in the Abstract”

Utility patent — the jury found asserted utility patent claims invalid as both anticipated and obvious. On appeal, Columbia argued that the obviousness evidence lacked “competent expert testimony” that the Federal Circuit has previously required in complex cases to explain the prior art to a jury. On appeal, the court ruled that the invention here was simple enough so that expert explanations were not required:

[W]e are not persuaded that the legal determination of obviousness in this case requires such evidence. The technology here—coated materials for cold weather and outdoor products—is “easily understandable without the need for expert explanatory testimony.”  Quoting Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) and Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361 (Fed. Cir. 2004)). . . . There is no discussion of thermodynamics or the mechanism that yields the claimed material’s heat retentive properties in the patent. Thus, given the patent and references’ general, easily understood language, this is not a case that requires expert explanation.

Slip Op.

Venue: The venue setup for this case was interesting.  It was originally filed in Oregon and then was transferred to California following T.C. Heartland.  Since the case was already far-along in the litigation process (post summary judgment), Judge Hernandez who handled the case in Oregon also got himself temporarily assigned to the case in California and ran the trial from there.  On appeal, Columbia argued that the transfer was improper because Seirus had waived its venue argument. However, the Federal Circuit found no problem — holding that the district court did not abuse its discretion in excusing Seirus’s waiver of its venue defense.

First Post-Samsung Design Patent Damages Verdict

Ed. Note: I summarized the Federal Circuit’s design patent decision in Curver Luxembourg v. Home Expressions in a recent post titled Federal Circuit Rejects Patenting Designs “in the Abstract.” Prof. Burstein has previously written about the case and the topic and I invited her to provide some remarks on the case. – D.Crouch

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By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law (@designlaw)

Two quick observations at the outset:

1. This decision is consistent with previously-decided case law on infringement.* (For a full run-down, see my law review article: The Patented Design.)
2. This decision not consistent with the USPTO’s current novelty rule. According to the MPEP, “[a]nticipation does not require that the claimed design and the prior art be from analogous arts,” relying on an out-of-context quote (which, as the Federal Circuit pointed out, was also dicta) from In re Glavas. See MPEP § 1504.02. The court’s ruling on this point is a welcome correction and should spur the USPTO to revise its examination procedures.

This case also raises a deeper and more important question—namely, what does it mean for something to be a “design for an article of manufacture”?

Design patents are available for “any new, original and ornamental design for an article of manufacture,” subject to the other requirements of Title 35. See 35 U.S.C. § 171(a). Prior to this case, some suggested that a “design for an article” refers to merely a design that is capable of being applied to one or more articles, not a design that is in any sense “for” any particular article. Under this view, the longstanding USPTO requirement that an applicant identify an article could be viewed as a type of reduction-to-practice requirement or mere formality that should not (or even must not) limit the scope of the claim.

The Federal Circuit’s decision in Curver seems to reject that conception of the patentable “design.” Although it doesn’t fully answer the question of what it means to be a “design for an article of manufacture,” this decision is a step in the right direction.

So what happens now? The USPTO requires a design patent applicant to identify an article in the verbal portion of the claim and (the same article) in the title. See 37 CFR § 1.153. But it also instructs examiners to “afford the applicant substantial latitude in the language of the title/claim” because, under 35 U.S.C. § 112, “the claim defines ‘the subject matter which the inventor or joint inventor regards as the invention.’” MPEP § 1503.01(I).

The Federal Circuit’s decision in Curver creates incentives for applicants to seek broader titles in order to obtain broader scope. In theory, that incentive would be counter-balanced by the fact that a broader title would create a broader universe of § 102 prior art. But given how difficult it is for patent examiners and accused infringers to find relevant prior art (an issue I discuss here), that seems unlikely to be a significant deterrent to over-claiming.

The risk of prosecution history estoppel might be a more significant practical deterrent. Curver initially claimed a “design for a furniture part.” When the examiner deemed that “too vague,” Curver amended the claim to refer to a “chair.” The Federal Circuit ruled that this amendment did limit the claim. Future applicants will have every incentive to push back on these types of rejections, putting pressure on the USPTO to enunciate clearer rules about how specific article identifications need to be.

In that respect, the USPTO (and anyone who’s interested in this topic) may want to revisit the CCPA’s 1931 decision in In re Schnell. In that case, the applicant attempted to frame its claim very broadly and the CCPA rejected that attempt. In doing so, the CCPA engaged in a thoughtful and nuanced discussion about how different types of designs might lend themselves to different types of claiming and how those claims might affect a design patent’s scope. The approach taken in Schnell is not the only possible (or necessarily the best) approach, but it’s worth considering.

I’ve also been asked how Curver might affect arguments about what constitutes the “relevant article” for the purposes of § 289. (For more on that issue, see this previous post.) At this point, it’s hard to answer that question with any certainty because the Federal Circuit has still not picked a test for Samsung step one. If it adopts the test proposed by the U.S. Government in its Samsung v. Apple amicus brief, the article identification in the patent would be relevant to the damages inquiry. This approach gives applicants incentives to direct the verbal portions of their claims to he largest salable unit. See, e.g., U.S. Patent No. D852,236 (stating that the design is “for a refrigerator” but only actually claiming a small part of the shape of the interior of a refrigerator). In some circumstances, these incentives might conflict with the ones provided by Curver; it will be interesting to see how applicants balance them in future applications.

And while Curver is only directly relevant to the scope of § 102 prior art, I suspect applicants will also argue that it should also narrow the universe of § 103 prior art. But when it comes to designs, it actually makes sense for the universe of § 103 prior art to be broader than the universe of § 102 prior art. (For more on these points, see here and here).

One final note: In Curver, the panel described the asserted patent as “atypical” because “all of the drawings fail to depict an article of manufacture for the ornamental design.” But it’s actually quite common for surface-ornamentation designs to be illustrated in this way. Whether or not that is a good policy (and whether it is consistent with § 112) is another question. The answer probably depends on what it means for a surface design to be “for an article of manufacture”? Even for repeating patterns like the one claimed in Curver, it could be argued that placement and proportion are still essential elements of a design for a particular article. If that’s true, then the disembodied-fragment drawing convention also needs to be reconsidered.

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* Other commentators have asserted that, in the past, courts treated surface-ornamentation as designs per se. But they cited no cases in support of that assertion and I have not been able to find any. For more details, see FN 480 here.

by Dennis Crouch

Automotive Body Parts Ass’n v. Ford Global Techs. (Fed. Cir. 2019)

Car manufacturers regularly use design patents to control the repair marketplace.  In this case, Ford accused members of the ABPA of infringing its U.S. Patent No. D489,299 (F150 truck hood) and U.S. Patent No. D501,685 (F150 headlamp) and APBA responded with a declaratory judgment lawsuit — arguing that the patented designs are functional rather than ornamental and therefore invalid.

A design patent must be directed to an “ornamental design for an article of
manufacture” and not one “dictated by function.”  High Point Design LLC v.
Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013) (interpreting 35 U.S.C. § 171(a)).   Although the article of manufacture itself is typically functional, the design itself may not be “primarily functional.”

The Federal Circuit has applied a multi-factor approach that basically asks whether the claimed design is “essential to the use of the article.” Factors:

[W]hether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.

Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452 (Fed. Cir. 1997).

ABPA’s argument here is that anyone repairing a damaged F150 truck will want replacement parts that match the original design.  In particular, APBA “argues
that Ford’s hood and headlamp designs are functional because they aesthetically match the F-150 truck.”  On appeal, the Federal Circuit rejected this theory of functionality: “the aesthetic appeal of a design to consumers is inadequate to render that design functional” —  “even in this context of a consumer preference for a particular design to match other parts of a whole.”  According to the court, market advantage via aesthetic appeal is the exact type of market advantage that design patents are supposed to provide.

The holding here gives a powerful nod of approval to the already rampant use of design patents to lock-in consumers for repair parts and for manufacturers to use design patents to prohibit unauthorized interconnections.  In this form, the case sits closely alongside the Federal Circuit’s decision on Google v. Oracle that is pending certiorari before the Supreme Court.  The case also reaffirms the tradition that the functional limit in design patents is a very weak test — even weaker than that of copyright and trademark law. 

Auto insurance companies have long lobbied congress to weaken design patent coverage on repair parts. This case may trigger a resurgence in that activity.  The case also suggests a potential marketplace for after-market parts that are slightly different from OEM but still functional.  I’d probably prefer an F150 that doesn’t look like the original.  

by Dennis Crouch

The chart below shows the number of design patents granted each calendar year (orange) going back to 1993.  The figures for 2018 are current through the end of August 2018. 2018 figures have also been extrapolated to the end of the calendar year — predicting an all-time-high of 31,000+ design patents issued in 2018.  In the shadow-grey background the chart also shows the number of design patent applications filed each year as reported by the PTO (These applications are ordinarily kept secret unless the application results in a patent).

Take away: More design patents than ever, but I don’t know if we are progressing?

By Professor Sarah Burstein, University of Oklahoma College of Law

In re Maatita (Fed. Cir. 2018) – Dyk (author), Reyna & Stoll

[Professor Crouch already summarized the facts and the basics of the court’s decision here. I don’t want to re-cover the same ground but I will note this isn’t the first time Judge Dyk has engaged in what Professor Crouch aptly describes as design patent “cosplay layering.” See In re Seaway, which I discuss at FN 131 here.]

So, this is bad. This is really bad.

Maatita claimed a three-dimensional design for a “Shoe Bottom.” He illustrated the design he sought to patent with a single view, as shown below:

A U.S. design patent can only claim one design. Multiple embodiments of the same design may be claimed “only if they involve a single inventive concept according to the nonstatutory double patenting practice for designs.” MPEP § 1504.05.

The PTO viewed Maatita’s drawing as a claim for multiple “designs.” As the examiner’s illustrations (shown below) demonstrate, the segments of the shoe portion shown in Maatita’s drawing could—without more information—cover shapes of varying depth and could be either convex or concave:

And those are just a few examples of the range of three-dimensional designs potentially covered by Maatita’s claim. The PTO rejected Maatita’s claim under § 112 because it failed to make clear which of those designs was actually being claimed.

The Federal Circuit reversed. According to the Federal Circuit, a design patent claim is indefinite only “if it includes multiple, internally inconsistent drawings” or if “there are inconsistences between the visual disclosure and the claim language.”

Here, according to the Federal Circuit, it was perfectly clear what Maatita was claiming—namely, a configuration of indeterminate and potentially variable depth. In other words, the court found it clear (and was apparently untroubled by the fact) that Maatita was disclaiming “the relative depths and three dimensionality between the surface.” Thus, according to the Federal Circuit, the claim was neither indefinite or non-enabled under § 112.

To support its conclusion, the court conflated configuration and surface-ornamentation designs. According to the court, if a design for the surface ornamentation of a rug can be illustrated using a single “two-dimensional, plan- or planar-view,” there was no reason why a configuration design of indeterminate depth could not be so claimed, as long as it was clear what angle the ordinary viewer should view the design from. But surface-ornamentation and configuration are completely different types of designs. They should not be treated the same in all instances. The fact that an ordinary observer would view the surface-ornamentation design for a rug to be “the same” design (which is, after all, the test for infringement) whether it was used in a high-pile or low-pile rug does not mean that an ordinary observer would think that all of the shoe-sole designs claimed by Maatita were, in fact, “the same” design. Consider the examiner’s examples shown above. If a design patent claimed one of those, it wouldn’t be infringed by the others. If they’re not considered “the same” design for the purposes of infringement, they should not be considered “the same” design for the purposes of § 171.

If Maatita is read as holding that a 3D design of indeterminate depth is, in fact, a single “design” under § 171, then the Federal Circuit has radically redefined the concept of a patentable “design” to a degree not seen since In re Zahn (I discuss that decision in Section III(A)(2) here). In Zahn, the CCPA said it was okay to claim a “design” for the configuration of just a portion of an article of manufacture. Post-Zahn, applicants could craft claims that would be infringed even if the overall shape of the article differed, as long as the claimed portion looked the same.

But at least in Zahn, it was clear what the claimed portion looked like. Maatita has opened the door to design claims of unprecedented (or, at least, not previously judicially-sanctioned) breadth. It is true that the PTO already allowed applicants to claim designs of indeterminate length using brackets or similar drawing conventions. But it’s very different to say that a design for, say, crown molding is “the same” whether it’s six inches or six feet long, and quite another to say that all the shoe-sole configuration variations above (let alone the numerous other potential variations) are “the same.”

Moreover, unlike design patent examiners, patent attorneys and agents are not required to have any training in design. It may, therefore, be difficult for them to imagine and effectively communicate (e.g., by drawing) the scope of Maatita-type claims. This adds a further layer of complexity and potential peril for clients who wish to clear their new designs and determine their freedom to operate.

I hope the PTO will seek to have this case reheard en banc. Or even petition for certiorari. If they don’t, I hope that they will reject this claim on remand under § 171 on the grounds that it claims more than one “design for an article of manufacture.” After all, the Federal Circuit did not directly rule on that issue—though, admittedly, parts of the decision may be read as supporting that view. The better view is that those parts were merely instances of accepting Maatita’s views for the purposes of argument, since the single-design issue wasn’t necessary to the court’s ultimate disposition of the § 112 issues.

It may be that this decision is simply a part of a larger Federal Circuit campaign to, as Professor Crouch puts it, “undermin[e] . . . the indefiniteness doctrine.” But I’d like to suggest that this is yet another example of the evil Zahn hath wrought, with its radical redefinition of what constitutes a “design.” If the “design” mentioned in § 171 is whatever the applicant says it is, it’s difficult to see how courts will ever be able to apply § 112 in a coherent or logical way. (Of course, the word “design” itself isn’t terribly helpful in and of itself as I discuss in more detail here.) Perhaps this case is just another sign that the time has come for a re-appraisal of what types of “designs” U.S. design patent law can—and should—protect.

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Prof. Burstein tweets about design patents @design_law

This painting is amazing! Also a good candidate for transformative work of the day: https://t.co/nHDOR2Giqo

— Sarah Burstein (@design_law) August 27, 2018

In re Maatita (Fed. Cir. 2018) (Dynasty Footwear) (Before DYK, REYNA, and STOLL)

Ron Maatita’s design patent application covers a shoe bottom – as shown above.  Note here that most of the markings in the drawing are dashed lines — for design patents these are “broken lines” that indicate “environmental structure or boundaries that form no part of the design to be patented.”   See MPEP 1503.  I used my MSPaint skills to focus in on the particular portions of the shoe sole having solid lines.

During prosecution, the USPTO (examiner then PTAB) rejected the patent — finding the claim indefinite and not enabled.  The particular problem with the drawing is that it is a flat plan view and does not show the three-dimensional structure — what do these lines actually represent in terms of 3D hills and valleys?  The figures below is more ordinary for a shoe sole design — showing more than just a plan-view of the base.

On appeal, the Federal Circuit began its analysis with some crazy-talk as to how indefiniteness should be interpreted for design patents:

A design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.

[Crouch’s Diatribe] Lets reiterate the newly sanctioned process here to see whether my crazy-talk statement holds true: A judge (not someone of skill in the art) must place herself in the shoes of a person of skill in the art (PHOSITA). Then, while in that cosplay mode, the pretend PHOSITA looks at the claimed design from the perspective of an ordinary observer (OO) to see whether it provides reasonably certain limits.  Note here that the an Ordinary Observer is in the position of considering evidence and making factual conclusions — in this case, however, the same evidentiary rules do not apply and the determination is a question of law.  I wonder what other yoga poses are available to the panel.

In walking through the actual level of detail required, the court explained that sometimes a two-dimensional illustration is sufficient.

The design for an entire shoe or teapot, for instance, is inherently three-dimensional and could not be adequately disclosed with a single, plan- or planarview drawing. Whether an article infringed would depend on the perspective chosen to view the article, and a two-dimensional drawing provides no fixed perspective for viewing an article. The article would be infringing from one perspective but not from another. The design of a rug or placemat, on the other hand, is capable of being viewed and understood in two-dimensions through a plan- or planar-view illustration, which clearly defines the proper perspective.

In this case, the court recognized that a shoe sole is a three-dimensional object, but that it is still possible to sufficiently disclose a shoe sole design using just a plan-view.

[T]he fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a two-dimensional, plan- or planar-view perspective—and that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement.

Rejection Reversed.

In the end, this means that Maatita’s patent will be much broader in scope because it is not limited to any particular three-dimensional shape, but rather only a to the appearance from a particular perspective.

The decision here is also in-line with the Federal Circuit’s ongoing undermining of the indefiniteness doctrine — what does “reasonable certainty” mean to the court?

by Dennis Crouch

Advantek Mktg. v. Shanghai Walk-Long Tools (Fed. Cir. 2018)

Advantek’s U.S. Design Patent No. D715,008 covering the above-pictured “pet gazebo” that Advantek also sells as its flagship product. Long-Walk allegedly copied the design in its “pet companion” product.  However, the district court dismissed the case on the pleadings — finding that the prosecution history barred any infringement finding.  On appeal, however, the Federal Circuit has reversed.  This is one of the few cases considering prosecution history of a design patent.

The Prosecution: The design patent application included Figures 1-4 (kennel without a cover) as well as Figure 5 (kennel with a cover) and explained that the embodiments are identical except for the cover.  In its initial action, the Examiner issued a restriction requirement dividing between Group I – Figs 1-4 (kennel without a cover); and Group II – Fig 5 (Kennel with a cover) — finding that the two groups are distinct embodiments and further that the single claim requirement of design patent bars the inclusion of figures having distinct combinations of elements.  The applicant “disagreed” but still elected Group I and withdrew Figure 5.  The patent issued without the applicant filing a divisional application to cover the withdrawn claimed figure.  Note here that the figures of a design patent are effectively the claim — thus any amendment to the figures is also a change to the claim scope and coverage.

In the litigation, Walk-Long’s product does have a cover and the basic question is whether the design patent can cover a product with the cover — knowing that the patentee originally claimed a kennel with/without a cover – but but then dropped the with-a-cover portion.

Doctrine of Surrender: In Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014), the Federal Circuit explained that prosecution surrender does apply in design patent cases. Here, however, Advantek argues that its design without-a-cover is present in the accused kennel (as a substructure of the whole).  Although Walk-Long sells the kennel with a cover, it is first assembled without the cover — and remains without a cover until the cover is installed. Although eliminating the cover appears to actually broaden the claims — the appellate court did not particularly decide whether there was surrender. Rather, the Federal Circuit determined that at a minimum, anything surrendered was outside the scope of the accused product.

Regardless of whether Advantek surrendered claim scope during prosecution, the accused product falls outside the scope of the purported surrender, contrary to the district court’s conclusion. Advantek elected to patent the ornamental design for a kennel with a particular skeletal structure. A competitor who sells a kennel embodying Advantek’s patented structural design infringes the D’006 patent, regardless of extra features, such as a cover, that the competitor might add to its kennel.

On appeal, the Federal Circuit noted particularly that a claimed article of manufacture can include a whole product or components thereof. Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429 (2016); Gorham Manufacturing Co v. White, 81 U.S. 511 (1872).

As a footnote, the court tied-back to Samsung — noting in dicta that any damages collected should be on the profits of the structure without the cover.  “Of course, if the accused skeletal structure is only a component of an accused multicomponent product, Advantek would only be able to seek damages based on the value of the component, not the product as a whole.”