Tag Archives: design patent

Apple v. Samsung: Design Patents Win

May 18, 2015PatentAffirmed Without Opinion, Claim Construction, Damages, design patent, LicensesJason Rantanen

By Jason Rantanen

Apple Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. 2015) Download Opinion
Panel: Prost (author), O’Malley, Chen

Apple prevailed at the district court on trade dress, design patent and utility patent claims, with a total award of almost a billion dollars. On appeal, the Federal Circuit reversed on trade dress but affirmed on the design and utility patents. The big winner in this case, though, are design patents: the Federal Circuit rejected Samsung’s attempt to exclude functional features from the infringement analysis and affirmed the district court’s award of Samsung’s total profits from the sale of the phones with the infringing design.

Trade Dress: Samsung challenged Apple’s unregistered and registered trade dresses on the ground that they were functional. Applying the Ninth Circuit’s law on Lanham Act claims, the Federal Circuit agreed that Apple’s asserted trade dresses possessed utilitarian functionality. In reaching this conclusion, it placed particular weight on the “product configuration” nature of the trade dress. “[C]ourts have noted that it is, and should be, more difficult to claim product configuration trade dress than other forms of trade dress.” Slip Op. at 8, quoting Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1011-12 (9th Cir. 1999). Here, all factors weighed in favor of the trade dresses being functional and thus unprotectable under trademark law.

Design Patents: A substantial portion of Apple’s billion dollar verdict were based on the infringement of its design patents and Samsung attacked that issue with an array of arguments. The Federal Circuit rejected all of them.

Functionality and infringement: Samsung argued that “the district court erred in failing to exclude the functional aspects of the design patents either in the claim construction or elsewhere in the infringement jury instructions.” Slip Op. at 20. “For example, Samsung contends that rectangular form and rounded corners are among such elements that should be ignored in the infringement analysis.” Id. But, the court held, the precedent cited by Samsung did not support a rule “to eliminate elements from the claim scope of a valid patent in analyzing infringement.” Id. at 21 Nor did the district court err in its construction of the patent: the principle that “it is the non-functional, design aspects that are pertinent to determinations of infringement” was properly reflected in “the district court’s construction
of the design patents as claiming only ‘the ornamental design’ as shown in the patent figures.” Id.

Actual deception not required and the role of prior art: In its instruction on infringement, the district court stated: “You do not need, however, to find that any purchasers actually were deceived or confused by the appearance of the accused Samsung products.” Samsung argued that this instruction misled the jury; the Federal Circuit disagreed. “[T]he jury instruction simply clarified that actual deception was not required, which is an accurate reflection of the analysis in Gorham.” Id. at 23. Nor did the jury instructions reduce the consideration of the prior art to a mere option.

Samsung also argued that infringement was not supported by substantial evidence, but its substantive arguments were essentially the same as its challenges to the jury instructions. The court rejected these and Samsung’s argument that the district court abused its discretion in precluding certain testimony.

Damages: This is the section of the opinion that will probably get the most attention. The damages statute for design patent infringement, 35 U.S.C. § 289 states:

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement

In other words, “Section 289 explicitly authorizes the award of total profit from the article of manufacture bearing the patented design.” Slip Op. at 25 (emphasis added). That is, Samsung’s total profit from its sales of phones with the infringing designs.

Samsung raised two primary arguments. First, it argued in favor of apportionment based on a causality theory; that is, that the only profits attributable to the infringement be allowable as damages. But the statute says “total profit,” and the statutory history contained an express removal of a prior apportionment requirement in the Act of 1887. Second, Samsung argued that the “article of manufacture” should be limited to the infringing “article of manufacture” and not the entire infringing product. Again, the Federal Circuit disagreed, distinguishing Samsung’s citation to a 1957 Second Circuit case involving pianos and piano cases. The Federal Circuit did not substantively engage with the statutory language on this issue.

The bottom line is that high damages claims for design patent infringement are going to be much more credible in the wake of Apple v. Samsung. Under the court’s ruling, it would seem entirely possible, as a hypothetical example, for an automobile manufacturer to be liable for its entire profits from a particular car model if that model contained, say, an infringing tail light. Given the publicity surrounding Apple v. Samsung, my expectation is that there will be explosion of design patent assertions and lawsuits.

Utility Patents: Samsung raised an indefiniteness argument based on the claim term “substantially centered;” unsurprisingly, the Federal Circuit rejected it. There is one interesting little nugget, though: Samsung lost because it “points to no evidence showing that skilled artisans would find the element ‘substantially centered’ as lacking reasonable certainty in its scope.” Slip Op. at 29. This language is notable because it reflects the court’s waffling between indefiniteness as an evidentiary question and indefiniteness as question of law. The former expressly involves testimony about what one of skill in the art would understand; the latter is a question for the court.

Utility Patent Damages: Lost profits for utility patent infringement does require a showing of causality and Samsung argued that there was an acceptable noninfringing substitute. But “the ‘[m]ere existence of a competing device does not make that device an acceptable substitute.’” Id. at 31, quoting precedent. All Samsung pointed to was the “mere existence” of a noninfringing phone. This was not enough, and “there was substantial evidence to support the jury’s refusal to consider the two phones asserted by Samsung as non-infringing substitutes.” Id. at 32. The Federal Circuit also rejected Samsung’s challenges to the reasonable royalty award on the set of phones for which Apple was not entitled to lost profits.

Hat tip to Tom Cotter for being the first to alert me to the opinion, which initially appeared only on PACER. His writeup of the damages discussion: http://comparativepatentremedies.blogspot.com/2015/05/federal-circuit-affirms-damages-awards.html.

Publishing Design Patent Applications: Time to Act

May 8, 2015Patentanticipation, design patent, obviousnessJason Rantanen

Guest Post by Gary L. Griswold. Mr. Griswold is a Consultant residing in Hudson, WI and was formerly President and Chief Intellectual Property Counsel for 3M Innovative Properties Company. The paper reflects the views of the author. He wishes to thank Bob Armitage and Mike Kirk for their excellent contributions to the paper.

Last summer I wrote a paper[1] with this same title explaining why now is the time to commence universal publication of all design patent applications filed in the United States. Indeed, recent events have made this the perfect time to legislate such transparency.

The United States has now deposited its instrument of ratification of the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs. The Geneva Act will enter into force, in respect to the United States, on May 13, 2015. The Final Rules were published by the USPTO on April 2, 2015. U.S. applicants will be able to file under Hague, have their Hague-filed applications published by the International Bureau of the World Intellectual Property Organization at 6 months from filing, and be eligible following such international publication for provisional rights to recover a reasonable royalty under 35 U.S.C. 154(d).

For the reasons stated in my earlier paper, all U.S. design applicants—not just Hague applicants—should have the benefits that come from this type of universal examination transparency. Transparency places design patent applicants into the driver’s seat, able to head off those that may be tempted to copy a product incorporating the published design. They can develop a filing plan which meets their circumstances and know exactly when their application will be published making provisional rights available.

Importantly, the published application will produce an immediate prior art effect retroactive to its filing date once published—for both anticipation and obviousness purposes. Thus, those who would subsequently seek to obtain patents on the same design or obvious variants would be blocked.

Armed with the knowledge from published pending patent filings, competitors will have the opportunity at an early point in their commercialization process to design away from designs covered by published claims. They can thereby avoid the potential exposure under provisional rights, as well as the potential for post issuance infringement liability for the infringer’s total profits (35 U.S.C. 289).

The public will benefit from the opportunity to provide input into the examination process. Public input during the examination phase carries with it the promise of a higher quality examination and more certain patent validity. Competitors will have the ability to provide patent examiners with prior art that might otherwise not surface or be overlooked.

This is possible because the America Invents Act (AIA) offers a brief time window after publication of an application for public submissions of prior art to patent examiners. The limited duration of this opportunity assures that the speed of examination is not negatively impacted. Public input of this type can have the collateral benefit of lessening the likelihood that a PGR or IPR will be initiated based upon missed or overlooked prior art during the patent application filing and examination process.

Publication of domestic design patent applications should occur, as it does for international design patent applications under Hague, six months after the U. S. filing. In my earlier paper, I explained the reasons that 18 month publication used for utility patent application publication is inappropriate for design applications. The short examination pendency before design applications mature into issued patents dictates that design patent applications be published at six months.

Understandably, concerns over this move to transparency have been expressed by those who have grown comfortable with the pre-Hague status quo. Adapting to any new regime requires adjustments to new opportunities and new challenges. Utility patent practitioners have blazed the trail here, having gone through a major change-in-practice drill with the America Inventor’s Protection Act (AIPA) and AIA. In the end, the transparency that early publication would provide and the benefits that it would offer to clients argue strongly for professionals to embrace this change.

An important goal of the patent system is to promptly and efficiently grant valid patents on inventions that stimulate marketplace innovation. Publishing design patent applications advances that goal.

[1] Griswold, Gary L., Publishing Design Patent Applications: Time to Act¸ Patently-O (August 24, 2014), available at https://patentlyo.com/patent/2014/08/publishing-design-applications.html and IPO L.J. (August 26, 2014), available at http://www.ipo.org/wp-content/uploads/2014/08/design_patent_gg_article.pdf

Design Patents §103 – Obvious to Whom and As Compared to What?

September 17, 2014Patentanticipation, Damages, design patent, Federal Circuit En Banc, First to Invent, obviousnessDennis Crouch

Guest Post by Paul Morgan

This is an increasing important and not fully resolved legal issue which should logically be addressed in the pending Fed. Cir. appeal of the nearly $1 billion infringement damages award in Apple v. Samsung, re the Apple design patents held infringed. That award seems to have inspired increased design patent assertions and design application filings. In that case Judge Koh had even called the application of the Supreme Courts controlling KSR decision on §103 an “open question” as to design patents! Apple, Inc. v. Samsung Electronics Co., Ltd., Case No.: II-CV-01846-LHK, Slip Op. at 19 (N.D. Cal. Dec. 2, 2011). These issues could also arise soon in PTO IPR PTAB decision appeals to the Fed. Cir. The PTAB has already issued a final written decision in the first IPR against a design patent. Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, Ltd, IPR 2013-00072 (Paper No. 28) (April 21, 2014).

In contrast to utility patent litigation, in design patent litigation summary judgments for non-infringement are relatively rare, while summary judgments for §103 obviousness are more common. This is so even though they have the very same §103. Yet the Supreme Court’s controlling §103 guidelines in KSR Int’l Co. v. Teleflex Inc, 550 U. S. 398 (2007) have been strangely totally ignored or not applied in many subsequent design cases. Instead, unique old Fed. Cir. case law is still being applied in making §103 design prior art comparisons and combinations, as discussed below. Perhaps this reportedly high rate of design patent §103 summary judgments logically correlates with the prior study and report on this blog at: https://patentlyo.com/patent/2010/01/design-patent-rejections.html showing that design patent applications are issued with only rare §103 rejections by PTO design patent application examiners? That is, prior art is rarely being applied at the examination stage. Again, this is opposite from PTO utility patent application examination, even though under the very same §103 standard. A recent example of a Fed. Cir. sustained §103 summary judgment of two design patents in suit isMRC Innovations v. Hunter Mfg. (Fed. Cir. 2014).

Is another reason for relatively less non-infringement than §103 summary judgments in design patent cases due in part to the usual absence of any verbal claim distinctions, plus the Egyptian Goddess “ordinary observer” test? The “ordinary observer” test for designpatent infringement must also be contrasted with the traditional judicial view of design patent “claims scope” as narrow – see, e.g., cases cited in the article “Functionality and Design Patent Validity and Infringement”, 91 Journal of the Patent and Trademark Office Society (JPTOS) 313, May, 2009, by Perry J. Saidman of the DesignLaw Group. But is the scope of design patents now being treated consistently with the black-letter case law that claims in litigation must have the same scope for infringement and validity? Is there a problem with lack of legal guidance of how prior art is to be treated in defining a design patent’s claim scope for, or before, an “ordinary observer” infringement test? [It has been argued that this was a jury instruction defect in the above Apple decision.]

In what seems like a remarkably begrudging semi-admission [which may be due to its particular panel members], the panel in Titan Tire Corp. v. Case New Holland, Inc. 566 F.3d 1372, (Fed. Cir. 2009) said that “it is not obvious that the Supreme Court necessarily intended to exclude design patents from the reach of KSR.” However even this Fed. Cir. panel held that: “Our precedents teach that ‘the ultimate inquiry under section 103 is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.’ Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (citing In re Rosen, 673 F.2d 388, 390 (CCPA 1982)).”

Yet the patent statute at §171 is perfectly clear that design patents have the very same §103 as other patents. §103 requires “..that the claimed invention as a whole would have been obvious .. to a person having ordinary skill in the art to which the claimed invention pertains” [emphasis supplied]. For design patents that has to be a person having ordinary skill in the art of industrial product design, not the non-skill level of any lay person, such as a jury member. [This §103 requirement should, of course, not be confused with a §102 novelty test.]

The prior en banc Federal Circuit “Egyptian Goddess” decision on design patent infringement, Egyptian Goddess, Inc. v. Swisa, Inc. 543 F.3d 665 (Fed. Cir. 2008), notes, just after referring to “the hypothetical ordinary observer who is conversant with the prior art” test fordesign patent infringement, that: “We emphasize that although the approach we adopt will frequently involve comparisons between the claimed design and the prior art, it is not a test for determining validity, but is designed solely as a test of infringement.” Unfortunately this en banc Egyptian Goddess decision did not clarify that statement further.

In High Point Design LLC v. Buyers Direct, Inc., (Fed. Cir. 2013) a Fed. Cir. panel had to face up to the District Court below having been mislead by one of the Court’s own prior design patent decisions, and had to re-clarify its §103 “obvious to whom” case law. Key text in this High Point Design decision includes:

The use of an “ordinary observer” standard to assess the potential obviousness of a design patent runs contrary to the precedent of this court and our predecessor court, under which the obviousness of a design patent must, instead, be assessed from the viewpoint of an ordinary designer. See Apple, 678 F.3d at 1329 (“In addressing a claim of obviousness in a design patent, ‘the ultimate inquiry . is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.’”) (quoting Durling, 101 F.3d at 103); Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1380–81 (Fed. Cir. 2009) (same); In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (“The central inquiry in analyzing an ornamental design for obviousness is whether the design would have been obvious to ‘a designer of ordinary skill who designs articles of the type involved.’”) ..

Although High Point Design cites prior Fed. Cir. decisions which note §103, its does not base the decision directly on this controlling statute, as it could and should have! Instead, this High Point Design footnote 2 below unsuccessfully attempts to explain-away a priorconflicting, erroneous “ordinary observer” invalidity test decision, but ends up by noting that it cannot, in any event, overrule even earlier Fed. Cir. decisions:

² We do not believe our decision in International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009), cited by the district court, compelsa contrary conclusion. The International Seaway court may in fact have had the “designer of ordinary skill” standard in mind when it used the term “ordinary observer.” In any event, the court could not rewrite precedent setting forth the designer of ordinary skill standard. See Vas Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991); Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.3d 757, 765 (Fed. Cir. 1998).

This High Point Design decision should, finally, end part of the debate over the proper “obvious to whom” test for design patent obviousness. [Prior §103 design patent decisions include In re Nalbandian, 661 F.2d 1214, 1215-16 (CCPA 1981) and In re Carter, 673 F.2d 1378 (CCPA 1982), both cited in MPEP Section 1504.03, and the above Walter E. Durling v. Spectrum Furniture Company, Inc., 101 F.3d 100, 103 (Fed. Cir. 1996).]

* * * *

However, High Point Design still leaves another important unresolved §103 issue for design patents, one serious enough that it may end up in another Supreme Court challenge if the Fed. Cir. does not address it. I have labeled this the “as compared to what”? question. Because High Point Design does not even mention KSR and instead continues to apply an additional and unique “obviousness” analysis requirement for design patents from old pre-KSR case law. An additional requirement that is not in §103 and does not seem consistent with KSR or even some other §103 combination of references case law. Specifically, High Point Design states:

When assessing the potential obviousness of a design patent, a finder of fact employs two distinct steps: first, “one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design”; second, “[o]nce this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (internal quotations omitted); see also Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012). Under the first step, a court must both “(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” Durling, 101 F.3d at 103.”

Another way in which this above unique old special §103 test for design patents is sometimes expressed is a requirement to “first find a Rosen reference” (In re Leon Rosen, 673 F.2d 388, 391 (CCPA 1982)). [That may be quite difficult in some cases.] Note particularly the above High Point requirements for first finding a single reference that has “basically the same” design characteristics and visual impression, and only modifying it with other references to create “the same overall visual appearance.” Does that seem appropriate for a normal §103 analysis? Does this old judicially created §103 analysis for design patents not significantly reduce §103-usable or combinable prior art? How is that consistent with the controlling Sup. Ct. KSR §103 guidance for combining references, completely ignored in High Point Design? Has anyone suggested any reason why KSR does not apply to design patent §103 analysis?

In this respect, here are some specific §103-KSR issues to consider. Is not the designing of costly consumer products intended to be sold by the millions [like smart phones] an “art” in which the §103 “ordinary skill” level of product designers would be expected to be especially high? Furthermore, do not professional product designers normally work on many different products and use product appearance design ideas from many different fields and products, far more than for utililty patents? To express that another way, should not “non-analogous art” arguments against combining art for a 103 rejection be even less effective for design patents after KSR than for utility patents?

* * * * *

I have no stake in any of these interesting legal issues. I simply think members and professional organizations of the patent bar as well as legal academics should be doing more pro bono thinking about them. Hopefully the Federal Circuit will provide clearer guidance in future decisions.

Guest Post: Publishing Design Patent Applications: Time to Act

August 24, 2014PatentAIA Trials, anticipation, Damages, design patent, obviousness, PGR, Trade SecretsJason Rantanen

Gary L. Griswold

Mr. Griswold is a Consultant residing in Hudson, WI and was formerly President and Chief Intellectual Property Counsel for 3M Innovative Properties Company. The essay reflects the views of the author. He wishes to thank Bob Armitage and Mike Kirk for their excellent contributions to the essay.

Overview

Design patenting has come of age. According to a recent World Intellectual Property Organization (WIPO) study, the filing of design patent applications more than doubled between 2004 and 2011.[1] The stakes in design patent litigation today can be enormous. One commentator on the recent Apple-Samsung iPhone IP wars noted, “After operating in the intellectual property backwaters for years, design patents took center stage in the epic battle.”[2]

Enterprises of all sizes have come to recognize the value to be had from securing patents on their innovative designs. This also means that more businesses now need to consider whether design patents of others might impair their freedom to operate when placing a new product on the market.

Unlike conventional (“utility”) patent applications, design patent applications are not subject to the “publication” provisions that were placed in the U.S. patent law in 1999 with the enactment of the American Inventors Protection Act (AIPA). Utility patent applications, with a few exceptions, must all be published and made publicly available within 18 months after filing.[3] However, all design patent applications are required to be kept in secret in the United States Patent and Trademark Office (USPTO) until the patent issues on the application.

Today this secrecy can have significant and negative consequences – for the design’s creator and for those who commit resources to manufacture a similar product before the issuance of the design patent. Unlike most utility patents today, the first inkling that a patent is being sought on a new product’s design may come with grant of a design patent, in other words come at the end of the examination process in the USPTO.

The growing importance of design patents suggests that this exclusion from publication with respect to design patent application publication should be rectified by Congress. This can best be done by requiring that all pending design patent applications be made available to the public by publishing these applications at 6 months after the date that they were originally filed.

Doing so would put the public on notice, shortly after the design patent application is filed, that a new product’s design may be protected. The growing prominence of design patenting, as well as other developments in the law since 1999, now make it timely for Congress to act.

Background

Two major pieces of patent legislation over the past 15 years have worked to make the U.S. patent law operate with vastly greater transparency, predictability and simplicity. The AIPA, with its requirement that most new non-design patent filings must be published at 18-months after their original filing dates was followed by a host of even more significant patent reforms. These were contained in the Leahy-Smith America Invents Act (AIA) of 2011.[4]

Key provisions of the AIA were designed to allow inventors to accurately assess whether they could secure – or had secured – a valid patent. For utility patents, access to earlier-filed patent applications comes though the AIPA’s publication provisions. Clearly, since some patents can take years to issue, holding earlier-filed patent applications in secrecy in the United States Patent and Trademark Office (USPTO) until a patent issued meant that an inventor might mistakenly invest based on the apparent validity of a patent that might then evaporate upon the issuance of a patent on a never-published, earlier-filed patent application.

The AIA also sought to assure that members of the public could more effectively participate in the patenting process. It allowed members of the public to be involved in the determination of whether a claimed invention in a patent application can be validly issued as a patent, both before the patent issues and after the patent issuance.

If action is taken promptly after a pending patent application is published, the AIA permits a member of the public to make a “pre-grant submission” of relevant prior art that the patent examiner handling the patent application must consider in deciding whether a patent should issue on the application.[5] These submissions, most notably include the earlier-sought patent applications of other inventors that have been published under the AIPA’s provisions.

In addition, the new “post-grant review” or “PGR” provisions of the AIA permit a member of the public to raise in a USPTO proceeding any issue of a patent’s validity that could be raised in court by someone accused of infringing the patent. However, these PGR provisions, like the pre-grant submission provisions, require that an individual act promptly. In this case, the PGR petition must be filed within nine months of the issue date of the patent that is being opposed.

Given the formidable requirements for requesting a PGR, most individuals making a PGR request will benefit from advance notice that a patent is about to issue. This notice, of course, is automatic when the patent application has been published under the AIPA’s provisions.

The manner in which the AIA built upon the AIPA’s provisions, both with pre-grant submissions and with post-grant review, work to benefit patent owners and their potential competitors alike. However, while these new pre-grant and post-grant provisions technically apply both to design and utility patents, the lack of any “publication provision” for design patents means that these provisions are now significantly less effective for designs.

The Rationale for Excluding Design Patents from the AIPA Publication Provisions No Longer Makes Sense

When the AIPA was enacted, there were two significant exceptions to the rule that pending applications for patent would be published and made publicly accessible. First, these provisions allowed inventors seeking only U.S. patents to opt-out of the publication requirement. This was done for inventors interested in patent protection only for the U.S. market on the assumption that at least some of them might not want their inventions publicly disclosed if they were ultimately not going to be able to receive a valid patent. However, for almost all such inventions, marketing the invention necessarily discloses to the public what the invention is and, in fact, discloses much more about the invention to the public than would normally be found in an inventor’s patent application if published.

Thus, this rationale, particularly today, makes little sense. The inventor can be “protected” from public disclosure by opting-out of the publication provisions of the AIPA only in the situation where the invention is never commercialized and essentially has no economic value, or in the limited situations where the invention can be effectively practiced as a trade secret. Consequently, it is a protection that seldom affords any economic value to the inventor.

Under the AIA, the publication of an invention in a pending patent application provides an inventor with a guarantee that no one else will be able to successfully secure a patent on the same or a similar invention based on an application filed after the inventor’s patent filing. Where someone subsequently files for a patent, the earlier-filed application limits the later-filing inventor to validly patenting only subject matter both novel and non-obvious over what was disclosed in the earlier-filed application.

Design patents were totally excluded from the 18-month publication provisions. The rationale for the design patent exclusion can be found in the legislative history of the AIPA: “Since design applications do not disclose technology, inventors do not have a particular interest in having them published.” That statement, whatever its validity then, was made before design patenting came of age and has little relevance today, as evidenced by the litigation between Apple and Samsung.

Another reason given for the design exception was that “The Hague Agreement Concerning the International Registration of Industrial Designs” was being revised and that any change to the design patent law should await the outcome of that exercise. That outcome is now clear; Congress has acted to remove the exception for design patents filed under The Hague Agreement.[6]

Yet another reason that design patents may have been left out of the mix when the publication provisions of the AIPA were being drafted was the short pendency of a design patent application. “Pendency” is the time taken by a patent examiner between filing and issuance of the design patent. With pre-grant submissions of prior art and post-grant review under the AIA now in place, that relatively shorter pendency before the Patent Office for design applications versus utility applications makes it much more important to have design applications not only published, but published quite promptly, i.e., at six months from the patent filing.[7]

The last reason Congress may have excepted design patents from publication is that some manufacturers may not have wanted the designs for new products to be prematurely disclosed, prior to market introduction.[8] Under the AIA, however, the filing of a design patent application assures that no similar designs can be patented based upon a later-filed design patent application. In addition, early publication puts competitors on notice that there is a “patent pending” on the design so that they dare not copy the design without the risk of infringing a subsequently issued design patent. Instead of a problem for manufacturers, pre-grant publication carries with it undeniably important benefits.

In addition to the “notice” function that arises from publishing a design patent application, inventors whose design patent applications publish secure yet another benefit under the AIPA. They can qualify for “provisional rights” – that is the right to collect reasonable royalty damages from anyone who uses the design during the period from the date the user received notice of the published design application until issuance of the patent on the design.[9] This again reflects the upsides of publication, much potential gain with a negligible prospect of incurring any pain.

Conclusions

The AIA increased the openness and transparency of the patent system by providing for pre-grant submissions and post- grant review. These provisions work to protect the public against patents that lack valid claims – and similarly protect the inventor from making investments in reliance on patents that could never be successfully enforced. Those aspects of the AIA are premised in part on the publication of pending patent applications. Whatever reasons can be cited for excluding design patent applications from these important provisions of the AIPA, such reasons now have only historic significance. Today, all design patent inventors deserve equal treatment. The availability of the benefits of publishing pending design patent applications should not depend on where a design patent inventor seeks patent protection.

In sum, the agreement to allow publication of design patent applications filed by U.S. inventors under The Hague Agreement represents a significant step by the United States toward achieving the open, transparent 21^st century patent system contemplated by the AIPA and AIA. The increase in design patent application activity – and the prominence of design patent enforcement efforts – renders this a perfect time to remove the exclusion from publication of those design patent applications filed only in the United States.

[1] According to WIPO, in 2012, “the 1.22 million industrial designs contained in applications grew by 17%—the highest growth on record.” http://www.wipo.int/export/sites/www/freepublications/en/statistics/943/wipo_pub_943_2013.pdf, at p. 4.

[2] See http://designpatentattorney.com/wp-content/uploads/2013/01/Carani-Lanslide-Article-Design-Patents-Take-Center-Stage-Jan-Feb-2013.pdf.

[3] Most utility patent applications must be published under the AIPA’s publication provisions. The time period set for publishing utility patents is 18 months after the initial patent filing date. 35 U.S.C. § 122(b).

[4] The United States adopted a so-called first-inventor-to-file system as the principle for determining what subject matter can represent “prior art” to a claimed invention. Also, a number of subjective and non-transparent aspects of the rules on patenting were removed.

[5] Because prior art can be submitted to the USPTO anonymously, members of the public and competitors of the applicant are normally comfortable in making such submissions. Since the processing time is shorter for design patent applications than that of utility patent applications, a narrower time window (e.g., before the earlier of a notice of allowance and the later of (1) the first rejection or (2) 2 months after publication) would be necessary for submitting third party submissions.

[6] The implementing legislation for the Geneva Act of The Hague Agreement has been enacted by the United States and rules for its implementation are being finalized by the USPTO. Once the rules are completed, the formal process for membership will be initiated and completed. The Common Regulations Under the 1999 [Geneva] Act and the 1960 Act of The Hague Agreement provide for publication of international applications six months after the date of the international Registration (which occurs upon receipt by WIPO of the international application). This publication of the international application will be considered a publication in the U.S. under 35 USC 390. The U.S. will not allow deferral of publication. Thus, any concerns related to the early publication of design patent applications as a policy matter have already been decided by Congress in favor of publication.

[7] As with utility patent applications, the public may well be aware of better prior art for design patent applications than the USPTO. If design patent applications were published, interested members of the public could submit prior art to the USPTO with the result that any issuing design patents would have been more thoroughly examined, benefiting both the applicant and public.

[8] Because of the speed of issuance, design applications filed only in the U.S. would need to be published 6 months after their U.S. filing date. Any concern with timing of publication relative to commercialization would seem to be handled by a 6 month period between filing and publication, which mirrors The Hague Agreement, and the relatively rapid grant (typically 15 months) of design patents.

[9] By providing that publication under The Hague Agreement will be deemed a publication under 35 USC 122(b), the implementing legislation (35 U.S.C. 390) makes such design patent applications eligible for provisional rights under 35 USC 154(d).

Federal Circuit affirms Rule 12 dismissal of a design patent case

July 14, 2014Patentdesign patent, Federal Circuit En BancDennis Crouch

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

Anderson v. Kimberly-Clark Corp. (Fed. Cir. 2014) (nonprecedential)

Panel: Prost, Clevenger, Chen (per curiam)

In this case, pro se plaintiff Anderson alleged that nine different disposable undergarments infringed U.S. Patent No. D401,328 (the “D’328 patent”). Kimberly-Clark moved for judgment on the pleadings, asserting that it only manufactured five of the nine accused products—and none of those five infringed the D’328 patent. In a per curiam opinion released only two days after the case was submitted to the panel, the Federal Circuit agreed.

Under Egyptian Goddess, a design patent is infringed if “an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.” As these illustrations from Kimberly-Clark’s motion for judgment on the pleadings show, the accused products manufactured by Kimberly-Clark do not even arguably look “the same” as the patented design:

Indeed, in opposing Kimberly-Clark’s motion, Anderson did not even argue that the designs looked alike. And on appeal, her main argument was that the district court erred in considering the images shown above because they were not attached to her complaint. The Federal Circuit rejected this argument, concluding that the district court did not err in considering the images because: (1) Anderson did not dispute their accuracy or authenticity; and (2) the appearances of the patent illustrations and accused products were integral to her claims. And ultimately, the Federal Circuit found no error in the District Court’s conclusion that Anderson had failed to state a plausible claim for infringement.

So this was a pretty easy case on the merits. And it is, of course, nonprecedential. But it’s still noteworthy because of its procedural posture. Since Egyptian Goddess, a number of courts have granted summary judgment of noninfringement where, as here, the accused designs were “plainly dissimilar” from the claimed design. But Rule 12 dismissals are still rare. And dismissals pursuant to Rule 12(c) are even rarer. It will be interesting to see if cases like this inspire more defendants to seek dismissal of weak design patent claims at the pleading stage.

Design patent nonobviousness jurisprudence — going to the dogs?

April 3, 2014Obviousness, Patentdesign patent, First to Invent, Licenses, obviousnessJason Rantanen

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

MRC Innovations, Inc. v. Hunter Mfg., LLP (Fed. Cir. April 2, 2014) 13-1433.Opinion.3-31-2014.1

Panel: Prost (author), Rader, Chen

MRC owns U.S. Patent Nos. D634,488 S (“the D’488 patent”) and D634,487 S (“the D’487 patent”). Both patents claim designs for sports jerseys for dogs—specifically, the D’488 patent claims a design for a football jersey (below left) and the D’487 patent claims a design for a baseball jersey (below right):

Mark Cohen is the principal shareholder of MRC and the named inventor on both patents. Hunter is a retailer of licensed sports products, including pet jerseys. In the past, Hunter purchased pet jerseys from companies affiliated with Cohen. The relationship broke down in 2010. Hunter subsequently contracted with another supplier (also a defendant-appellee in this case) to make jerseys similar to those designed by Cohen.

MRC sued Hunter and its new supplier for patent infringement. The district court granted summary judgment to the defendants, concluding that the patents-in-suit were invalid as obvious in light of the following pieces of prior art:

The Federal Circuit uses a two-step test to determine whether a design is obvious. First, the court must identify a proper primary reference—i.e., a “something in existence” that has “basically the same” appearance as the claimed design. Second, other references can be used to modify the primary reference “to create a design that has the same overall visual appearance of the claimed design.” Any such secondary references must be “so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.”

Step One – Primary References

On appeal, MRC argued that the district court erred in identifying the Eagles jersey as a primary reference for the D’488 patent. The Federal Circuit disagreed, stating that either the Eagles Jersey or the V2 jersey could serve as a proper primary reference for the D’488 patent.

MRC also argued that the Sporty K9 jersey could not serve as a proper primary reference for the D’487 patent. Again, the Federal Circuit disagreed, stating that the Sporty K9 jersey had “basically the same” appearance as the patented design.

Step Two – Secondary References

In its analysis, the district court used the V2 jersey and Sporty K9 jersey as secondary references for the D’488 patent and the Eagles jersey and V2 jersey as secondary references for the D’487 patent. On appeal, “MRC argue[d] that the district court erred by failing to explain why a skilled artisan would have chosen to incorporate” features found in the secondary references with those found in the primary references. The Federal Circuit did not agree, stating that:

It is true that “[i]n order for secondary references to be considered, . . . there must be some suggestion in the prior art to modify the basic design with features from the secondary references.” In re Borden, 90 F.3d at 1574. However, we have explained this requirement to mean that “the teachings of prior art designs may be combined only when the designs are ‘so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.’” Id. at 1575 (quoting In re Glavas, 230 F.2d 447, 450 (CCPA 1956)). In other words, it is the mere similarity in appearance that itself provides the suggestion that one should apply certain features to another design.

The Federal Circuit noted that in Borden, it found that designs for dual-chambered containers could be proper secondary references where the claimed design was also directed to a dual-chambered container. And in this case, “the secondary references that the district court relied on were not furniture, or drapes, or dresses, or even human football jerseys; they were football jerseys designed to be worn by dogs.” Accordingly, the Federal Circuit concluded that they were proper secondary references.

Secondary Considerations

MRC also argued that the district court failed to properly consider its evidence of commercial success, copying and acceptance by others. The Federal Circuit disagreed, concluding that MRC had failed to meet its burden of proving a nexus between those secondary considerations and the claimed designs.

Comments

The Federal Circuit hasn’t actually reached the second step of this test in a while. That’s because it has been requiring a very high degree of similarity for primary references (see High Point & Apple I). For a while there, it looked like it was becoming practically impossible to invalidate any design patents under § 103. Now we at least know that it’s still possible.

But we don’t have much guidance as to when it’s possible. In particular, it’s difficult to reconcile the Federal Circuit’s decision on the primary reference issue with its decision in High Point. The Woolrich slipper designs that were used as primary references by the district court in High Point were, at least arguably, as similar to the patented slipper design as the Eagles and Sporty K9 jerseys are to MRC’s designs. But in High Point, the Federal Circuit suggested that there were genuine issues of fact as to whether the slippers were proper primary references.

And unfortunately, the Federal Circuit seems to have revived the ill-advised Borden standard. As I’ve argued before, the second step of the § 103 test has never made much sense. Even the judges of the C.C.P.A., the court that created the test, had trouble agreeing about how it should be applied. But the Borden gloss—that there is an “implicit suggestion to combine” where the two design features that were missing from the primary reference could be found in similar products—is particularly nonsensical. At best, this Borden-type evidence suggests that it would be possible to incorporate a given feature into a new design, from a mechanical perspective—not that it would be obvious to do so, from an aesthetic perspective.

All in all, this case provides an excellent illustration of the problems with the Federal Circuit’s current test for design patent nonobviousness. Perhaps now that litigants can see that § 103 challenges are not futile, the Federal Circuit will have opportunities to reconsider its approach.

Design patents, trade dress & Apple III

November 19, 2013Patentdesign patentDennis Crouch

By Sarah Burstein, Associate Professor of Law at the University of Oklahoma College of Law

Apple, Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. Nov. 18, 2013) (Apple III) Download 2013-1129

Panel: Prost (author), Bryson, O’Malley

As Dennis reported yesterday, Apple has scored another win at the Federal Circuit. Specifically, the Federal Circuit has vacated and remanded Judge Koh’s denial of a permanent injunction with respect to Apple’s utility patents.

But it wasn’t a complete win. The Federal Circuit affirmed Judge Koh’s denial of a permanent injunction with respect to Apple’s design patents and product-design trade dress. This post will focus on the design-related portions of the Federal Circuit’s decision.

Design patents: Last summer, the jury found Samsung liable for infringing three design patents—U.S. Patent Nos. D618,677 (“the D’677 patent”), D593,087 (“the D’087 patent”) and D604,305 (“the D’305 patent”).

The D’677 and D’087 patents claim partial designs for smartphone configurations. Here are representative drawings from each of them:

The D’305 patent claims a design for a graphical user interface. Here is one of the claimed embodiments:

(Although the D’305 patent was published in black-and-white, one of the drawings was submitted in—and therefore claims—color. The image shown above is from one of Apple’s district court filings.)

Judge Koh denied Apple’s request for a permanent injunction with respect to these design patents. In her order, Judge Koh concluded that Apple “simply [had] not established a sufficient causal nexus between infringement of its design patents and irreparable harm.”

On appeal, Apple challenged that conclusion, pointing to: (1) evidence indicating “that design is important [to] consumer choice” in smartphones; and (2) “evidence of quotations from Samsung consumer surveys and from an industry review praising specific elements of both Apple’s and Samsung’s phone designs, including some elements of Apple’s patented designs.” According to Apple, this evidence was sufficient to establish a causal nexus.

The Federal Circuit did not exactly disagree. The court took some pains to point out that it “might not reverse the entry of an injunction based on [that] evidence.” But, emphasizing the deferential standard of review, the Federal Circuit decided that Judge Koh had not abused her discretion in denying an injunction.

According to the Federal Circuit, Judge Koh “correctly noted . . . that evidence showing the importance of a general feature of the type covered by a patent is typically insufficient to establish a causal nexus.” She “was also correct that isolated, anecdotal statements about single design elements do not establish that Apple’s broader patented designs are drivers of consumer demand.” Therefore, the Federal Circuit affirmed the denial of a permanent injunction with respect to the design patents.

Comment: This decision could make it more difficult for patent owners to get injunctions for partial designs—that is, when they assert design patents that claim portions (instead of all or most) of a product’s design. The Federal Circuit specifically distinguished this case from Apple I, which involved a design patent that claimed the entire configuration of a tablet computer.

Trade dress: The jury also found that Samsung infringed Apple’s unregistered iPhone 3G trade dress and registered iPhone trade dress (Reg. No. 3,470,983). Here is the illustration from the trade dress registration certificate:

Judge Koh denied Apple’s motion for injunctive relief on its trade dress claims, based on “Samsung’s cessation of its diluting conduct.”

On appeal, the Federal Circuit looked to the controlling regional circuit law—in this case, the law of the Ninth Circuit. The Federal Circuit noted that, under Ninth Circuit precedent, “ongoing diluting behavior is not necessary to obtain an injunction.” But, according to the Federal Circuit, that does not mean “that a court commits legal error if . . . it considers a defendant’s voluntary cessation of diluting behavior as a reason to deny injunctive relief.”

In this case, the undisputed evidence showed that Samsung stopped selling the offending products. And there was no evidence that it would sell them in the future. In light of that evidence, the Federal Circuit concluded that Judge Koh did not abuse her discretion in denying an injunction.

Comment: One particularly interesting issue raised by Judge Koh’s order remains unresolved. In ruling on Apple’s motion for a permanent injunction, Judge Koh concluded that Apple did not have to make a “showing of irreparable harm beyond the harm of dilution itself.” She based this conclusion on the text of 15 U.S.C. § 1125(c)(1). The Federal Circuit did not reach this issue in Apple III. But it might not be able to avoid it for long. Many plaintiffs assert trade dress claims along with their design patent claims. And, as readers of this blog no doubt are aware, those cases are within the Federal Circuit’s exclusive appellate jurisdiction. So the Federal Circuit will likely be confronted with this issue again—quite possibly before the regional circuits have a chance to weigh in.

Guest Post by Prof. Risch: Functionality and Graphical User Interface Design Patents

November 17, 2013PatentAbstract Idea, Damages, design patent, Subject Matter Eligibility, USPTO DirectorJason Rantanen

Guest Post by Michael Risch, Professor of Law, Villanova University School of Law

Read the whole draft here, forthcoming in the Stanford Tech. L. Rev.

Before I was a patent guy, I was a copyright guy, and I did much of my work and research in user interfaces. In the 1980’s and 1990’s, there was a lot of uncertainty about how user interfaces would be protected by copyright. The latest version of the Copyright Act had just become effective, and graphical user interfaces (GUIs) were just taking off. Following a lot of litigation, and despite seemingly contradictory appellate rulings and an equally divided Supreme Court in one case, things eventually settled down.

It is against this backdrop that I took great interest in the Apple v. Samsung case, which is in trial right now on damages issues. Buried in all the talk about rectangles with rounded corners and pinch to zoom is a graphical user interface design patent.

Several of Samsung’s phones infringed this patent. In my article, I consider the implications of design patents, functionality, and graphical user interfaces. This is a realm previously limited to copyright. The difference in protection is important because design patents do not traditionally allow the same defenses — like fair use — associated with copyright.

The article answers three emerging questions:

1. Aren’t GUIs something that should be protected by copyright only? Why should there be a patent? The answer is relatively simple: the law has, since 1870, contemplated dual protection. The article traces the history to explain why the law could have evolved differently, but simply did not.

2. Display screens change, both before and after sale. How can someone patent an ephemeral screen design? It also turns out that ephemeral designs have been protected for some time. Even so, the article proposes some limitations on the protection of GUIs that should address the special nature of GUI design patents.

3. There are many differences between Apple’s patent and Samsung’s product. How can Apple own the idea of square icons in a grid with a dock bar at the bottom? This last question is the most intractable: determining when a design is infringing, and the role that functionality should play in that consideration. The bulk of the article is dedicated to answering this question.

To answer the third question, the article draws on lessons from prior copyright disputes about GUIs. It first suggests that courts must act as gatekeepers, rather than allowing juries to determine which elements to disregard as functional. It then develops economic factors that can help the court determine whether a design element is functional, and whether to allow reuse by a competing program.

While the economic factors, such as consumer switching costs, apply to both copyright and design patents, the legal doctrine to achieve economic ends will necessarily differ. As noted above, there is no fair use doctrine in design patent law. Even so, there is a form of filtration, and the article proposes that such filtration be expanded to exclude functional elements from infringement analysis. The full article is available here.

High Point v. Buyer’s Direct – Tell me more, tell me more (about design patents and § 103)

September 12, 2013PatentClaim Construction, design patent, Federal Circuit En Banc, obviousness, USPTO DirectorJason Rantanen

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

High Point Design LLC v. Buyer’s Direct, Inc. (Fed. Cir. Sept. 11, 2013) Download High Point v Buyers Direct
Panel: Schall (author), O’Malley, Wallach

High Point Design LLC (“High Point”) and Buyer’s Direct, Inc. (“BDI”) both manufacture fuzzy slipper-socks. In this case, BDI accused High Point of infringing U.S. Des. Patent No. D598,183 (the “D’183 patent”). In May, the district court granted summary judgment in favor of High Point, concluding that the patented design was invalid as obvious and as functional. It also dismissed BDI’s trade dress claim.

The most interesting parts of this decision deal with the issue of obviousness. In the design patent context, the § 103 analysis has two steps. First, the court must identify a proper primary reference—i.e., a “something in existence” that has “basically the same” appearance as the claimed design. Second, other references can be used (assuming certain conditions are met) to modify the primary reference “to create a design that has the same overall visual appearance of the claimed design.”

In High Point, the district court identified two Woolrich slippers, the “Penta” and the “Laurel Hill,” as primary references. In particular, the district court found that the Penta slipper “looks indistinguishable” from the claimed design and that the Laurel Hill slipper had some “insubstantial” differences but “nonetheless has the precise look that an ordinary observer would think of as a physical embodiment” of the claimed design. The district court did not, however, include any images of these designs. For your reference, however, here is a chart comparing the Penta slipper to some of the drawings from the D’183 patent:

On appeal, the Federal Circuit decided that the district court erred in its primary reference analysis in a number of ways. According to the Federal Circuit, the district court “erred by failing to translate the design . . . into a verbal description.” On this point, the court relied on its 1996 decision in Durling v. Spectrum Furniture Co., Inc. In Durling, the court divided the first step of the § 103 analysis (i.e., the determination of whether there is a proper primary reference) into two parts, instructing district courts to: “(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” According to the Federal Circuit, the district court’s analysis in High Point failed to satisfy both of these requirements.

As to the “first part of the first step”—i.e., “discern[ing] the correct visual impression”—the Federal Circuit noted that, under Durling, “the trial court must first translate [the design patent’s] visual descriptions into words,” so that “the parties and appellate courts can discern the internal reasoning employed by the trial court to reach its decision as to whether or not a prior art design is basically the same as the claimed design.”[1] The Federal Circuit found the district court’s description of the D’183 patent to be insufficient because it described the claimed design at “too high a level of abstraction.” So it reversed and remanded on the issue of obviousness, instructing the district court to “add sufficient detail to its verbal description of the claimed design to evoke a visual image consonant with that design.” The Federal Circuit did not, however, explain how much detail would be “sufficient” to meet this evocation standard.

This part of the opinion may seem strange in light of the 2008 en banc decision in Egyptian Goddess, Inc. v. Swisa, Inc., in which the Federal Circuit cautioned district courts against “attempt[ing] to ‘construe’ a design patent claim by providing a detailed verbal description of the claimed design.” In Egyptian Goddess, the Federal Circuit did attempt to distinguish Durling, stating in a footnote that “[r]equiring such an explanation of a legal ruling as to invalidity is quite different from requiring an elaborate verbal claim construction to guide the finder of fact in conducting the infringement inquiry.” Whether that distinction is persuasive is an issue for another day.

As to the second part—i.e., determining whether there is a reference with “basically the same” impression—the Federal Circuit concluded that the district court failed to adequately explain its reasoning. It stated that, on remand, “the district court should do a side-by-side comparison of the [potential primary reference and the claimed design] to determine if they create the same visual impression.”

The Federal Circuit identified a number of other errors in the district court’s § 103 analysis, including its use of an “ordinary observer” standard. The Federal Circuit reiterated that “the obviousness of a design patent must . . . be assessed from the viewpoint of an ordinary designer,” notwithstanding some unfortunate dicta (my characterization, not the court’s) in the 2009 case of Seaway Trading Corp. v. Walgreens Corp.

However, despite all of its criticisms of the district court’s analysis, the Federal Circuit did not say that the district court’s conclusion was wrong. Indeed, the Federal Circuit expressly refused to take a position on the ultimate issue of whether the D’183 patent was obvious. And the Federal Circuit did not say that the Penta or the Laurel Hill slippers could not qualify as primary references. So it will be very interesting to see what happens on remand.

UK Moving on Design Patent Rights

April 30, 2013Patentdesign patent, Trade SecretsDennis Crouch

By Dennis Crouch

UK has an Intellectual Property Office (UKIPO) that is the go-to-agency when considering policy implications of potential changes to the laws. One recent focus of the UKIPO has been industrial design rights and “the extent to which the design industry is properly supported by the Intellectual Property Framework.” In a new whitepaper, the agency has released a proposal for amending the law and procedures of UK design rights. The agency takes the following positions:

Retain Unregistered UK Design Rights (for up to 15 years), however, the unregistered right will be limited to protect only against commercial copying of unique and major elements of a company’s product.
Extend the ownership limitations of Unregistered UK Design Rights to include anyone who carries out business in the EU or markets articles made to the design in the EU. The initial owner of design rights will be the designer – rather than the person who commissioned the design.
Allow for a 30-month delay in publishing registered design rights.
Align UK Copyright and Design Rights so that a company with permission to use a UK or EU design right implicitly has permission to use the equivalent UK Copyright.
Create criminal sanctions for deliberate copying of registered UK designs.

More available here: /media/docs/2013/04/response-2012-designs.pdf

In the US, unregistered design rights are also protectable, but they have to be fit either the Lanham Act, the Copyright Act, or some state law regime (such as Trade Secret or Unfair Competition).

Multiplicity of Design Patent Rights

April 9, 2013Patentdesign patentDennis Crouch

By Dennis Crouch

The number of design patent applications continues to rise. At least a portion of that rise is explained by an increase in the sophistication of design patent applicants. Rather than filing a single design patent that covers a new product release, the experts file a group of design patent applications that each claim a small portion of the overall design. Because a design patent claim is defined by the submitted drawings, each patent application will have slightly different figures. Often, the only change needed is to change portions of the drawing to either solid lines (claimed) or dashed-lines (unclaimed). This strategy has two beneficial results for the patentee: (1) competitors who copy only a portion of the product (suggestive free-riding) will still infringe; and (2) a patentees product design will still be covered by patent rights even after making small changes to the design. A second somewhat less common approach is to also file design patents on features that are closely-related but different from the patentee's actual product design. The intent is to create additional market distance for the patentee and is most effective in markets where direct knockoffs are common.

The images below come from six Gillette design patents all filed on the same day in 2012. The first drawing looks particularly at one of the designs – can see the solid lines that represent the claimed portion?

Gillette patents

D0674142

D0674141

D0674140

D0674139

D0674138

D0673730

Design Patent Backlog – Growing and Growing

March 28, 2013Patentdesign patentDennis Crouch

By Dennis Crouch

As the popularity of design patents continues to rise the USPTO is struggling to keep-up with the demand on its examination corps. The chart below shows the backlog of unexamined design patent cases. The PTO only has capacity to examine about 25,000 design patents per year and a 1+ year backlog is unacceptably long for design patent rights. You'll note that the backlog dips each September when year-end-quotas are due. At this point the delay is not causing problems for applicants who need quick patent issuance because "expedited examination" is available for a $900 fee (with discounts for small and micro entities). Throughout this time, the allowance rate for design patents has remained relatively steady at about 90%.

Design Patents in the Modern World Conference

March 13, 2013Patentdesign patentDennis Crouch

Stanford Law School is hosting what looks to be an excellent event on April 5, 2013 that focuses on design patents. The event is free, but you should register here.

Long neglected in practice and academic scholarship, design patents have exploded in importance as a result both of recent changes in the law and high-profile cases like Apple v. Samsung. Drawing on the experience of lawyers, in-house counsel and academics, our conference will explore both practical and policy ramifications of these developments.

Speakers include: Sarah Burstein (University of Oklahoma); Christopher Carani (McAndrews); Dennis Crouch (University of Missouri); Alan Morgan Datri (WIPO); Brian Hanlon (USPTO); Laura Heymann (William & Mary Law School); James Juo (Fulwider Patton); Robert Katz (Banner & Witcoff); Mark Lemley (Stanford); Jaime Lemons (Nike); Katie Maksym (Nike); Michael Meehan (Google); Mark McKenna (Notre Dame Law School); Tom Moga (Shook Hardy & Bacon); John Pratt (Kilpatrick Townsend); Michael Risch (Villanova Law School); Perry Saidman (Saidman Design Law); and Matt Schruers (CCIA).

More Info: http://www.law.stanford.edu/event/2013/04/05/design-patents-in-the-modern-world-conference

The following day (April 6, 2013), Stanford is also hosting an academic conference on design patents with additional speakers, including Paul Goldstein, Rebecca Tushnet, Pam Samuelson, David Abrams, Jason Du Mont, Andew Torrance, Sarah Wasserman Rajec, Graeme Dinwoodie, Sunder Madhavi, Peter Lee, Ryan Vocca, Gerard Magloicca, Rob Merges, and Colleen Chien. The second day is purely academic and will have some pie-in-the-sky, but is also free and open to practitioners.

See you there!

Design Patents on Images Shown on a Computer

March 8, 2013Patentdesign patentDennis Crouch

By Dennis Crouch

In a recent post, Tracy-Gene Durkin outlined some issues associated with GUI-based design patents. These design patents essentially cover computer images that are shown on a screen, such as a computer display or smartphone. I have written before that this type of patent is somewhat problematic because of its likelihood to impinge on free speech protections. I created the chart below of the number of these type of patents issued each year since 2005. In the PTO’s design patent classification system, these all fall within classes D14 / 485 – 495. The forecast for 2013 is also included.

Who is getting these icon design patents?: Microsoft. The software company has obtained 44% of the GUI-based design patents issued since 2005. Samsung & Apple are both big players in this market with around 5% each. Only 1% of the icon design patents are unassigned at issuance. This contrasts with the 22% of all design patents that are unassigned at issuance.

Pepsi holds over 40 icon design patents that appear to simply be advertisement drawings such as the “DEW” design patent shown below. U.S. Patent No. D.618,251.

Guest Post: What is Next in Design Patents for On-Screen Icons?

March 6, 2013Patentanticipation, design patent, obviousness, USPTO DirectorDennis Crouch

By Tracy-Gene G. Durkin

The recent Apple v. Samsung litigation has consumed the media since August when a California Jury awarded Apple more than $1 billion for infringement. Of the three design patents involved in that judgment, one was for a graphical user interface (GUI). This landmark case is the first time that a U.S. court has considered infringement of a GUI design patent and may be just the tip of the iceberg beginning to emerge within the design patent landscape.

How the Law Developed

Design law relating to GUI protection has developed at a slow rate since 1996, when the USPTO first created guidelines for the examination of GUI designs. The legal basis for design patents derives from the Patent Statute, 35 U.S.C. Section 171 which provides that whoever invents any new, original, and ornamental design for an “article of manufacture” may obtain a patent for it. Section 171 also refers to the design for an article as including ornamental designs of all kinds, such as surface ornamentation. The question then is how is GUI considered to be an article of manufacture under U.S. law?

The Manual of Patent Examination Procedure Section 1502 discusses what constitutes the ornamental appearance of a design, which includes the shape and configuration, indicia, contrasting color or materials, and graphic representations on an article of manufacture. Any ornamentation applied to an article is considered to be surface treatment. Surface treatment itself is not protectable with a design patent, but rather through copyright. However, when that surface treatment is applied to an article of manufacture it is protectable through a design patent.

The case of Ex parte Strijland 26 USPQ2d 1259 (BPAI 1992) established the protection of GUI using a design patent. This case was taken up at the USPTO Board of Appeals and Interferences (BPAI) over an icon. The examiner rejected the design as being unpatentable on the basis that it was not an ornamental design to be applied to an article of manufacture, but rather was mere surface ornamentation. The applicant then tried to add information to the application to include and describe the computer display on which the claimed icon could be displayed. The Examiner rejected the additional information as new matter. The BPAI affirmed the Examiner, but in doing so, created a road map of how to apply for a patentable GUI by suggesting that had the information that was added to the application after it was filed been provided at the time of filing the application, it would have made the design patentable because it provided an article of manufacture (the display) on which the GUI was presented as surface ornamentation.

In 1996, the USPTO created guidelines for the protection of GUIs based on the decision in Ex Parte Strijland. GUIs are now statutory subject matter, provided that the GUI design or surface ornamentation is shown with some portion of a display or other article of manufacture. Although there have been no reported USPTO BPAI decisions involving the patentability of GUI designs since the Strijland case of 1992, nor any reported infringement cases related to GUI’s (excluding Apple v. Samsung), there have apparently been GUI cases appealed to the BPAI. Those decisions have unfortunately not been published.

Requirements to patent a GUI design

The requirements to patent a GUI design in the United States are the same as for any other kind of design patent application. The design must be novel, not obvious, and not functional. The claimed design may be presented as a line drawing or a digital image. Color and grayscale are allowed to be presented in the same GUI application, but line drawings and digital images are not. Animated designs are also patentable in the United States, and must show a minimum of two views of the animation. More images may lead to a greater chance of patentability, although it may also lead to patent with a narrower scope.

Any attempt to add language about the article of manufacture in the title or the drawing figures after an application has been filed will be met with a new matter rejection during patent examination at the USPTO. Examiners search prior patented GUI designs as well as GUI utility patents in making their patentability analysis, resulting in a very complex and comprehensive search. While design patent applications are rarely rejected, the most common references used in a GUI design rejection are utility patents. Non-patent literature is also commonly used.

What’s Next for GUI Design Patents

The number of patent lawsuits involving GUI is increasing rapidly in the United States. According to the New York Times, over the last two decades the number of patent lawsuits filed yearly in U.S. district courts has tripled (3,260 were filed in 2010). According to a study done by Stanford University, $20 billion was spent on patent litigation and purchasing patents in the smartphone industry in the last two years. We also know from information provided recently by David Gerk from the USPTO’s Office of Policy and External Affairs at an Inn of Court meeting that the number of GUI design patent applications is currently growing at the fastest rate of any other area. As digital displays become common place on more and more consumer products, there is little doubt that the subject matter of the increased patent filings is extending well beyond the smart phone.

About the Author:
Tracy-Gene G. Durkin is a director and leader of the Mechanical Patent and Trademark Practice Group at intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox. Tracy is a recognized design patent expert and represents some of the most forward thinking companies in the area of product design and product packaging design. Contact Tracy via email at tdurkin@skgf.com.

Design Patent Infringement: Kimber Cakeware v. Bradshaw

March 4, 2013Patentdesign patentDennis Crouch

by Dennis Crouch

Kimber Cakeware v. Bradshaw Int’l (S.D. Ohio 2013)

Kimber’s design patent No. D671,376 covers a cup-cake batter separator. Kimber sells these as “batter babies” and they allow you to make cupcakes with two types of batter. Cool idea. Of course using a divider to segmenting baked goods is not a new idea. In fact, Robert Reiser (the ‘376 patentee) has his own prior patents covering other forms of cake-batter separators.

The question in this recently filed case is going to be infringement: whether “in the eye of an ordinary observer, giving such attention as a purchaser usually gives [and in light of the prior art], the two designs are substantially the same.” Quoting Gorham v. White (1871) as described in Egyptian Goddess v. Swisa (Fed. Cir. 2008).

The following image comes from the Kimber complaint. Of course, the missing factor here is the prior art.

File Attachment: KimberComplaint.pdf (403 KB)

Figures in Design Patents

February 17, 2013Patentdesign patent, Enablement, Written DescriptionDennis Crouch

By Dennis Crouch

The chart above shows a histogram of the number of figures included in a set of 90,000 US design patents issued over the past several years. The median number of figures is 7 and the average is 7.3 figures. The typical seven views are typically six orthogonal views and one perspective view. Designs with only one figure are typically surface treatments or screen icons. Microsoft’s recent GUI Design Patent No. D675,221 is shown to the right and appears to show an mapping interface for zooming in and out. In utility patents, the figures are used to flesh-out the disclosure and ensure that the requirements of written description and enablement are met. In design patents, the figures have the additional importance of defining the scope of the patent claim. In that vein, each additional figure may add additional limitations to the scope of coverage.

Design Patent Litigation: Notice Pleading Requirements Remain Low

January 28, 2013Patentanticipation, design patent, First to Invent, MarkingDennis Crouch

by Dennis Crouch

Hall v. Bed, Bath & Beyond, Inc. and Nachemin, __ F.3d __ (Fed. Cir. 2013)

This design patent decision is interesting and important on several levels and so I have divided the post into two sections. This section focuses on the district court's clear error in dismissing the infringement lawsuit on the pleadings. The second section will focus on the Federal Circuit's dismissal of the charges filed personally against the employees who caused the allegedly infringement.

The set-up here is interesting. Mr. R.J. Hall designed a new product known as a “Towel Tote” that is basically an absorbent scarf with pockets on the ends. [Buy one here.] After filing his design patent application, Hall sat down with Mr. Farley Nachemin at Bed Bath & Beyond (BB&B) to see whether the company would retail his product. Instead of moving forward with Hall, BB&B mailed Hall's product to Pakistan and had it copied and manufactured for retail distribution back in the US.

When his patent issued, Hall sued BB&B as well as Nachemin and other executives for design patent infringement and a number of state-law business claims such as, false advertising, misappropriation, and unfair competition. U.S. Design Patent No. D596,439. The district court then dismissed the case on the pleadings – finding that the complaint did not particularly identify the “new, original, and ornamental” features of the design patent. On appeal, the Federal Circuit rejects that decision and instead holds that, even under Iqbal and Twombly, a pleading does not require this level of information. Rather, following the law of utility patents, the court holds here that a proper design patent infringement complaint only requires the following five elements:

An allegation of ownership of the patent;
The name of the defendant;
The patent number;
A statement of the means by which the defendant allegedly infringes; and
Relevant sections of the patent laws.

Citing Phonometrics, Inc. v. Hospitality Franchise Systems, Inc., 203 F.3d 790 (Fed. Cir. 2000). In this case, the district court's ruling was well off-base because the design patentee need not prove the design's points of novelty even at trial since validity is presumed and infringement no longer relies on the points-of-novelty test.

In the litigation, BB&B had filed a counterclaim alleging that that Mr. Hall himself had violated the Lanham Act by telling the company his product was “protected by patent” even before the patent issued. BB&B also alleged that the Hall committed false marking by continuing to mark his product “patent pending” even several months after the patent had issued. On appeal, the Federal Circuit holds that these statements “cannot be viewed as even plausibly misleading.” With regard to the the false marking claim, the court also adds that the defendant had failed to plead competitive harm, which is now a core element of false marking under the Leahy-Smith America Invents Act of 2011.

+ + + + +

Judge Newman wrote the majority opinion that was joined by Judge Linn.

Judge Lourie wrote in dissent – basically arguing that more deference should have been given to the district court's role of ensuring that the pleadings are clear enough. Judge Lourie acknowledged legal mistakes of the district court, but also directed attention to a separate aspect of the district court decision. The district court wrote: “Rather than plead in a coherent fashion, making clear how the facts support a particular theory of infringement as to a given Defendant, Plaintiff has conflated all his facts, pleading without making any distinctions of any kind. This ambiguity in pleading is unacceptable.”

Notes

As with most design patents, this one issued without substantive examination on the merits. The application was filed in November 2008 and the first correspondence from the USPTO was a notice of allowance mailed in May 2009. The patent issued shortly thereafter.
Professor Tushnet has more on her site with more focus on the Lanham Act claims: http://tushnet.blogspot.com/2013/01/do-you-know-where-your-towel-is-and.html.

Design Patents are Still Relatively Quick

January 20, 2013Patentdesign patentDennis Crouch

The chart below is a histogram of prosecution pendency for design patents issued during the past three years. As the chart shows, the bulk of design patents are issued within 12-months of the filing date and only a handful take more than three years to issue. As I have written before, most design patents are issued without substantive rejection or amendment.

Nike's Design Patent No. D659,988 issued last year after less than three-months in prosecution as part of the design patent "rocket docket."

Toyota's Design patent No. D674327.

When does the Written Description Requirement Limit Amendments to Design Patent Drawings

January 16, 2013Patentdesign patent, Enablement, Written DescriptionDennis Crouch

By Dennis Crouch

In re Owens (Fed. Cir. 2013) (decision pending)

In 2006, P&G obtained a design patent for its Crest brand mouthwash bottle. D531,515. Before that patent issued, the company filed a continuation application and eventually amended the drawings to use ghost-lines (dashed lines) for most of the bottle design and solid design lines for only a small portion of the bottle surface.

In the figures below, the drawing on the left is the design drawing originally filed in the specification and issued in the D'515 patent. The drawing on the right is found in the continuation and the subject of this appeal. In design patents, the drawings are of critical importance because the single allowable design patent claim typically ties the scope of enforceable right to the drawings. Here, for instance, in the D'515 design patent P&G claims "the ornamental design for a bottle, as shown and described."

Now, for claim purposes, ghosted lines have essentially no meaning and are given no weight. Thus, the continuation below claims a portion of the bottle base. The focus of the litigation is on the front portion of the bottle that previously claimed an inverted irregular pentagon and now appears to be limited to only the upper portion of that pentagon in a roughly trapezoidal shape. The base of the trapezoid is ghosted, but the drawing does claim the surface up to the ghosted line. In the photo of the Crest bottle to the right, you can see the inverted pentagon design is created by a label sticker.

During prosecution, the PTO rejected P&G's continuation application — concluding that the new claim (as shown in the drawing) did not satisfy the written description requirement of 35 U.S.C. § 112(a). In other words, it is not apparent from the originally filed specification that that the inventor was at that time in possession of the invention as now claimed. P&G's argument is that the area being claimed was already disclosed in the original application and that is literally true. The PTO responds, however, that the original application did disclose a break-point for the trapezoidal area now being claimed. In other words, nothing in the original application indicates that the portion now claimed could itself be a design. The PTO has proposed a rule it feels is administrable: applicants can amend claims by "ghosting" solid lines and vice-versa, but applicants cannot further partition areas or define new portions without running afoul of the written description requirement.

Design patents are largely governed by the same rules as utility patents. This is often unfortunate because the policy goals supporting many of the (utility) patent rules do not map well to the world of design rights. Designs are, for the most part, being used as an additional layer of trademark (trade dress) protection rather than as an incentive to invest in the invention of new designs. This case fits that mold well. But, it is the patent laws that we follow.

In thinking about the written description requirement, a good beginning approach is to try to first uncover the best analogy to utility patent doctrine. One analogy might be to subgenus & subrange claims. Utility patents regularly disclose and claim concentration level ranges, such as "concentration of cardiolipin is between 0.02 and 0.04%." When impinging prior art is discovered, one solution is to amend the claim scope to narrow the claims – perhaps to change the concentration to "between 0.02 and 0.03%." However, the written description requirements limits an applicant's ability to make this narrowing amendment unless there is some evidence that the applicant had (at the time of the application filing date) possession of the invention with the narrower range as well. For these points, the M.P.E.P. cites In re Smith, 458 F.2d 1389 (CCPA 1972) (a subgenus is not necessarily described by a genus encompassing it and a species upon which it reads) and In re Lukach, 442 F.2d 967 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range). Of course, the amendment by P&G in the present case is not a narrowing amendment but rather might better be seen as a broadening amendment – of course, broader and narrower in design patent law is somewhat difficult to define. The written description requirement is also used to invalidate claims that have been broadened by eliminating claim limitations. Such cases include ICU Medical v. Alaris Medical System (Fed. Cir. 2009) and the often maligned Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) (claims to a sectional sofa comprising, inter alia, a console and a control means were held invalid for failing to satisfy the written description requirement where the claims were broadened by removing the location of the control means). See also MPEP § 2172.01.

All-in-all, the PTO's position makes sense to me – that nothing in the new original application suggests the claim limit as suggested by P&G. Design patent claims are considered "as a whole" and refocusing only on a small portion of a design can dramatically alter the impact and overall feel of the design. In the ordinary doctrine of patent law, such a potentially dramatic change in claim scope is only allowed if the original disclosure evidences that the inventor possessed the refocused invention at the time of filing. It is reasonable here to say that Owens did not possess that new invention as now claimed. Here, we should be keen to recognize that the written description requirement is separate and distinct from the enablement requirement – even though both arise from the same statutory phrase in Section 112. Here, there is no question that the enablement requirement is met.

The kicker for the PTO in this case is that written description is a question of fact and PTO determinations on questions of fact are given substantial deference on review by the PTO. There is hardly any question in my mind that the PTO's position passes that low threshold.

The case was recently argued before Judges Prost, Moore, and Wallach. This panel is interesting because of Judge Moore's famous pre-nomination article on the problems of patent continuations. This case arises out of a continuation. P&G wants to claim priority back to the original filing date because the original patent had already been out for more than a year by the time that the amended claims were introduced in the continuation. Thus, if it cannot claim priority then its original work will serve as prior art to block this later patent from issuing. A decision is expected later this spring.

In the trade dress world, this mess would not make such a difference because we don't worry about prior art but rather priority in the marketplace. But again, in the US, design patent rights are squarely within the pigeon hole of patent law.