Tag Archives: design patent

Guest Post by Prof. Burstein: Ethicon v. Covidien — Some key design patent issues

Patent,

In this post, Sarah Burstein, Associate Professor of Law at the University of Oklahoma College of Law, examines the design patent components of the Federal Circuit’s recent Ethicon decision.  Dennis’s discussion of the utility patent’s indefiniteness issue is here.

Ethicon Endo-Surgery, Inc. v. Covidien, Inc. (Fed. Cir. Aug. 7, 2015) Download opinion
Panel:  Chen (author), Lourie, Bryson

Ethicon alleged that Covidien’s Sonicision cordless ultrasonic dissection device infringed various utility and design patents. Each of the asserted design patents claimed a portion (or portions) of a design for a surgical device. A representative image from each patent is shown below:

patents_in_suit

All of the asserted design patents claimed at least some portion of the design of the u-shaped trigger. Three of them also claimed the design of the torque knob and/or activation button.

The district court granted summary judgment that the design patents were invalid for lack of ornamentality and not infringed. Ethicon appealed.

Validity

The Federal Circuit reversed the grant of summary judgment of invalidity. A patentable design must be, among other things, “ornamental.” The Federal Circuit has interpreted this as, essentially, a type of non-functionality requirement.

In deciding that the designs were invalid as functional, the district court relied on a number of factors from Berry Sterling Corp. v. Pescor Plastics, Inc. In Berry Sterling, the Federal Circuit stated that, in addition to the existence of alternative designs:

Other appropriate considerations might include: whether 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.

In their appellate briefs, the parties disputed the relevance and relative weight of these factors. Ethicon noted the significant tension between Berry Sterling and other controlling precedents, arguing that “[b]efore and after Berry Sterling, this Court has treated the presence or absence of alternative designs that work as well as the claimed design as a dispositive factor in analyzing functionality.” Covidien, on the other hand, argued that the availability of alternative designs was not a dispositive factor.

In its decision, the panel attempted to harmonize the conflicting precedents by stating that the Federal Circuit had not, in fact, previously “mandated applying any particular test for determining whether a claimed design is dictated by its function and therefore impermissibly functional.”

The panel noted, however, that the Federal Circuit had “often focused . . . on the availability of alternative designs as an important—if not dispositive—factor in evaluating the legal functionality of a claimed design.” The panel then recast the Berry Sterling factors as only being applicable “where the existence of alternative designs is not dispositive of the invalidity inquiry.” The panel did not explain how or when the existence of alternatives would—or would not be—dispositive as to validity. However, it did make it clear that “an inquiry into whether a claimed design is primarily functional should begin with an inquiry into the existence of alternative designs.”

Although Ethicon had submitted evidence of alternative designs, Covidien argued they were not “true alternatives because, as the district court found, they did not work ‘equally well’ as the claimed designs.” The Federal Circuit disagreed with Covidien for two main reasons:

First, the district court’s determination that the designs did not work “equally well” apparently describes the preferences of surgeons for certain basic design concepts, not differences in functionality of the differently designed ultrasonic shears. . . . Second, to be considered an alternative, the alternative design must simply provide “the same or similar functional capabilities.”

The Federal Circuit also decided that, in finding the claimed designs to be functional, the district court “used too high a level of abstraction,” focusing on general design concepts—for example, on the concept of an open trigger—instead of “the particular appearance and shape” of the claimed design elements. The Federal Circuit therefore reversed the district court’s summary judgment of invalidity.

Infringement

This decision also provided some useful clarification about how to apply the design patent infringement test, as formulated by the en banc Federal Circuit in Egyptian Goddess, Inc. v. Swisa, Inc. In the wake of Egyptian Goddess, some lawyers have argued that: (1) a court must (almost) always consider the prior art when analyzing design patent infringement; and (2) in certain circumstances, the prior art can be used to broaden the scope of a patented design.

In Ethicon, the panel helpfully—and accurately—clarifies the rule of Egyptian Goddess, noting that:

Where the claimed and accused designs are “sufficiently distinct” and “plainly dissimilar,” the patentee fails to meet its burden of proving infringement as a matter of law. If the claimed and accused designs are not plainly dissimilar, the inquiry may benefit from comparing the claimed and accused designs with prior art to identify differences that are not noticeable in the abstract but would be significant to the hypothetical ordinary observer familiar with the prior art. (Citations omitted.)

In this case, the district court engaged in a “side by side comparison between the claimed designs and the design of Covidien’s accused shears” and determined that they were plainly dissimilar and, therefore, the design patents were not infringed. The Federal Circuit provided these images as a representative example:

infringementEthicon argued that they were not plainly dissimilar and that the district court erred in not considering the prior art, “which Ethicon characterizes as predominantly featuring thumb-ring and loop-shaped triggers.” Essentially, Ethicon sought to broaden the scope of its patent by showing some significant visual “distance” from the prior art.

The Federal Circuit disagreed with Ethicon, finding no genuine dispute of fact on the issue of infringement. According to the court, the designs were only similar “[o]n a general conceptual level.” And because the designs were plainly dissimilar, the court “did not need to compare the claimed and accused designs with the prior art.” The court therefore affirmed the grant of summary judgment of non-infringement.

Federal Circuit affirms Rule 12 dismissal of a design patent case

Patent,

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?

Obviousness, Patent, , ,

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):

Design Patents

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:

Prior Art ChartThe 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.

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

Patent, , , ,

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:

High Point

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.