Design Patent Law Update

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Design Patent Design Update given at Global Patent Academy

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  • Point of Novelty Test No Longer Applicable For Design Patent Anticipation? “ In light of Supreme Court precedent and our precedent holding that the same tests must be applied to infringement and anticipation, and our holding in Egyptian Goddess that the ordinary observer test is the sole test for infringement, we now conclude that the ordinary observer test must logically be the sole test for anticipation as well. In doing so, we will prevent an inconsistency from developing between the infringement and anticipation analyses, and we will continue our well-established practice of maintaining identical tests for infringement and anticipation.”
  • Large question of “Substantial Similarity” as a New Standard for Design Patent Obviousness Not Clear how to apply Many questions on who is the ordinary observer Not the “holding” of the case
  • Design Patent Law Update

    1. 1. U.S. Design Patent Law Update United States Patent and Trademark Office Global Intellectual Property Academy - March 19 ,2010 Darrell G. Mottley, Banner & Witcoff, LTD [email_address]
    2. 2. Agenda - U.S. Design Patent Law Update
    3. 3. Design Patent Infringement Law UPDATE FROM 2008 AND BEYOND
    4. 4. The “Ordinary Observer” Test <ul><li>“ We hold . . . that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” </li></ul><ul><li>Gorham v. White , 81 U.S. 511, 528 (1871). </li></ul>INFRINGEMENT CASE LAW UPDATE The effect of the whole accused article must be substantially the same as the patented design, as viewed by an ordinary observer.
    5. 5. OLD “Point of Novelty Test” <ul><li>“ For a design to be infringed, however, no matter how similar two items look, the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.” Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984). </li></ul><ul><li>“ Even though the court compares two items through the eyes of the ordinary observer, it must nevertheless, to find infringement, attribute their similarity to the novelty which distinguishes the patented device from the prior art.” </li></ul>INFRINGEMENT CASE LAW UPDATE
    6. 6. INFRINGEMENT CASE LAW UPDATE
    7. 7. In Egyptian Goddess v. Swisa , the full Federal Circuit altered this two test framework for determining design patent infringement, all in the context of . . . Fingernail Buffers INFRINGEMENT CASE LAW UPDATE
    8. 8. Egyptian Goddess v. Swisa (Fed. Cir. 2008) (En Banc) Accused Design Patented Design D467,389 Swisa Nail Buffer Egyptian Goddess
    9. 9. Swisa moved for Summary Judgment on the grounds that it could not infringe under either the ordinary observer test or the point of novelty test. <ul><li>Swisa argued that the Swisa Buffer could not infringe under the point of novelty test because the only possible point of novelty in the D’389 design, the addition of a fourth side without an abrasive pad, was not present in the Swisa Buffer . </li></ul>Only possible point of novelty: 4 th side without a pad?? NailCo Buffer Egyptian Goddess v. Swisa (cont.)
    10. 10. Egyptian Goddess argued that its point of novelty was not the addition of a fourth side without a pad, but a combination point of novelty consisting of four prior art elements: <ul><li>1 . Open and hollow body </li></ul><ul><li>2. Square cross section </li></ul><ul><li>3. Raised rectangular pads </li></ul><ul><li>4. exposed corners . </li></ul>Point of Novelty- combination Egyptian Goddess v. Swisa (cont.)
    11. 11. In a split decision, the majority of the Federal Circuit panel affirmed, but in doing so introduced the “non-trivial advance test.” <ul><li>“ For a combination of individually known design elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art. Smith v. Whitman Saddle . . .” </li></ul><ul><li>“ In light of the prior art, no reasonable juror could conclude that EGI’s asserted point of novelty constituted a non-trivial advance over the prior art .” </li></ul>Egyptian Goddess v. Swisa (cont.)
    12. 12. The Federal Circuit granted rehearing en banc and vacated the panel decision. <ul><li>: </li></ul><ul><li>Should ‘point of novelty’ be a test for infringement of a design patent? </li></ul>The Federal Circuit ordered the parties to brief a series of questions going to the basic nature of design patent infringement, starting with: Egyptian Goddess v. Swisa (cont.)
    13. 13. Egyptian Goddess v. Swisa INFRINGEMENT ANALYSIS
    14. 14. Egyptian Goddess v. Swisa <ul><li>ORDINARY OBSERVER IN THE CONTEXT OF THE PRIOR ART </li></ul><ul><li>That purpose can be equally served . . . by applying the ordinary observer test through the eyes of an observer familiar with the prior art. If the accused design has copied a particular feature of the claimed design that departs conspicuously from the prior art, the accused design is naturally more likely to be regarded as deceptively similar to the claimed design, and thus infringing.” (emphasis added). </li></ul>
    15. 15. Egyptian Goddess v. Swisa INFRINGEMENT “CONTEXTUAL” ANALYSIS Accused Design Patented Design D467,389 Prior Art Prior Art
    16. 16. Egyptian Goddess v. Swisa (Fed. Cir. 2008) (En Banc) Accused Design Patented Design D467,389 Swisa Nail Buffer Egyptian Goddess
    17. 17. <ul><li>Patentee Burden of Proof </li></ul><ul><li>Under the ordinary observer test, the burden of proof to demonstrate infringement by a preponderance of the evidence remains on the patentee. </li></ul><ul><li>Accused Infringer Burden </li></ul><ul><li>If the accused infringer elects to rely on a prior art comparison as part of its defense against the claim of infringement, the burden of production of that prior art is on the accused infringer. </li></ul>INFRINGEMENT CASE LAW UPDATE Egyptian Goddess v. Swisa
    18. 18. Crocs, Inc. v. International Trade Commission _ F.3d _, 2010, WL 638272 (Fed. Cir. 2010) <ul><li>Crocs owns a design patent for colorful, holey, foam shoes. </li></ul><ul><li>Crocs sued several Defendants for copying the design of the foam shoes featuring holes in the forefoot and a strap for the heel. </li></ul>
    19. 19. Crocs, Inc. v. International Trade Commission 04/17/10 US Pat. D517,789 Representative Figures
    20. 20. Crocs at the International Trade Commission <ul><li>Crocs, Inc. v. ITC, 2008-1596 </li></ul><ul><li>4 respondents (Holey Soles, Collective Licensing, and Effervescent; Double Diamond) </li></ul><ul><li>Commission finally determined (pre-EG) that design patent (‘789 patent) was not infringed </li></ul>
    21. 21. Claim Construction of Crocs ‘789 Design Patent <ul><li>In summary, when the ’789 patent is considered as a whole, the visual impression created by the claimed design includes: footwear having a foot opening with a strap that may or may not include any patterning, is attached to the body of the footwear by two round connectors, is of uniform width between the two round connectors, has a wrench-head like shape at the point of attachment, and extends to the heel of the shoe; with round holes on the roof of the upper placed in a systematic pattern; with trapezoid-shaped holes evenly spaced around the sidewall of the upper including the front portion; with a relatively flat sole (except for upward curvature in the toe and heel) that may or may not contain tread on the upper and lower portions of the sole, but if tread exists, does not cover the entire sole, and scalloped indentations that extend from the side of the sole in the middle portion that curve toward each other. </li></ul>
    22. 22. Crocs, Inc. v. International Trade Commission Overview <ul><li>International Trade Commission (ITC) ruled against Crocs citing differences in the straps, the shape of the holes and how far apart the holes were in in the accused product </li></ul><ul><li>Fed. Cir. reversed ITC stating overall similarities between the shoes and patented design would have deceived the ordinary observer into believing the products at issue were same as Crocs design. </li></ul>
    23. 23. Crocs, Inc. v. International Trade Commission _ F.3d _, 2010, WL 638272 (Fed. Cir. 2010) <ul><li>Reiterates the ‘ordinary observer’ test of Egyptian Goddess v. Swisa (en banc) should be applied. </li></ul><ul><li>Ordinary Observer Test = To show infringement 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. </li></ul>
    24. 24. Crocs, Inc. v. International Trade Commission _ F.3d _, 2010, WL 638272 (Fed. Cir. 2010) <ul><li>Followed Egyptian Goddess v. Swisa (en banc) pertaining to Claim construction </li></ul><ul><li>Court cautioned against the excessive reliance on a detailed verbal description of the claimed design </li></ul><ul><li>Instead analysis requires examination of the design as a whole. </li></ul><ul><li>Requires a side-by-side view of the drawings of the patent design and accused products. </li></ul>
    25. 25. Crocs, Inc. v. International Trade Commission <ul><li>Patent Design on left, Groovy DAWGS TM shoes in center, and Big DAWGS TM shoes on right. </li></ul>SIDE BY SIDE COMPARISION
    26. 26. Crocs, Inc. v. International Trade Commission US Pat. D517,789 Effervescent Waldies AT shoe SIDE BY SIDE COMPARISION
    27. 27. Crocs, Inc. v. International Trade Commission <ul><li>Court found the accused products “nearly identical” to the patented design </li></ul><ul><li>“ If the claimed design and the accused designs were arrayed in matching colors and mixed up randomly, this court is not confident that an ordinary observer could properly restore them to their original order without very careful and prolonged effort.” </li></ul><ul><li>First Federal Circuit case after Egyptian Goddess to rule design patent: </li></ul>
    28. 28. DESIGN PATENT CLAIM CONSTRUCTION Case Law Update
    29. 29. Claim Construction Design Patent Cases <ul><li>Stems from 1996 decision of the Supreme Court in Markman v. Westview in which trial courts were given the duty to conduct claim construction in patent infringement cases </li></ul><ul><li>Fed Cir has not mandated any particular form that the claim construction should take </li></ul><ul><li>As a result, application by the District Courts have been widely varied </li></ul>
    30. 30. Claim Construction <ul><li>Markman v. Westview (Sup. Ct. 1996) – Utility Patents </li></ul><ul><ul><li>“ [T]he construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” </li></ul></ul><ul><ul><li>“ The construction of written instruments is one of those things that judges often do and are likely to do better than jurors . . . .” </li></ul></ul><ul><li>Elmer v. ICC Fabricating Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). </li></ul><ul><li>“ Determining whether a design patent claim has been infringed requires, </li></ul><ul><ul><li>first, as with utility patents, that the claim be properly construed to determine its meaning and scope . . . </li></ul></ul><ul><ul><li>second , the claim as properly construed must be compared to the accused design to determine whether there has been infringement ” </li></ul></ul>
    31. 31. DESIGN PATENT CLAIM CONSTRUCTION EXAMPLES Pre-Egyptian Goddess
    32. 32. Pre –EG Claim Construction <ul><li>Minka Lighting v. Craftmade (N.D.Tex. 2001) </li></ul><ul><ul><li>The '539 design patent claim is directed to an ornamental design for a combined ceiling fan and light having fan blades that overlie corresponding arms of a central bracket. The central bracket has a circular central opening through which a light fixture dome protrudes downward. The bracket has curved, fin-shaped arms, each of which sweeps outward from its base at the central opening and each of which terminates in a slightly rounded tip. The arms of the bracket are equally spaced about the central opening, and the length of each bracket arm is roughly one-third the length of the corresponding blade. The light fixture dome exhibits a partial sphere that transitions into a generally cylindrical portion adjacent the central bracket. A central housing, located above the fan blades, exhibits a generally cylindrical portion just above the fan blades that transitions into a concave portion. </li></ul></ul><ul><ul><li>When viewed from below, the fin-shaped arms of the central bracket seep outward from the central opening in a clockwise direction, which gives the appearance of a “running” pointed star. A symmetrical, elongated, generally football shaped cutout appears behind the leading edge of each arm. The fan blades are also swept in the clockwise direction, with the leading edges of the blades forming a sweeping curve near the bracket central opening. The trailing edges of the blades are straight but slightly offset from a diameter of the bracket central opening. The trailing edge of each blade smoothly transitions into the trailing edge of the corresponding bracket arm, which further forms a curved transition into the leading edge of the next bracket arm. A gently receding are in front of each bracket arm's leading edge runs from the tip of each arm to the middle of the smooth transition. Each fan blade terminates in a gently rounded corner on the leading edge and a sharply angled, rounded corner on the trailing edge. From its tip, the trailing edge of each bracket arm flares inwardly and rearwardly away from the straight trailing edge of the corresponding blade until it intersects the leading edge of the following blade. Due to the sweep of the bracket arms, the leading edge of each fan blade is substantially more exposed than in the trailing edge of each fan blade. </li></ul></ul><ul><ul><li>When viewed from above, the fan blades are swept in the counter-clockwise direction, which also gives the appearance of a pointed “running” star. Also when viewed from above, the trailing edge of the bracket arm is visible at the base of each fan blade. </li></ul></ul>
    33. 33. Claim Construction Example – Amini Innovation <ul><li>The patented design includes, but is not limited to, the following ornamental features: (1) a reverse curve of the bottom rail of the mirror in elevation that creates a void between the mirror and dresser; (2) a medial carved rail that divides the dresser doors (i.e., cupboard), which have a flat profile on the upper panels thereof, such that the doors have two separate, floating raised panels in each door with a reverse-curve foliate scrolls carved in the rail that separates the upper and lower panels in each door; and (3) a central drawer over the dresser cupboard. </li></ul>
    34. 34. CLAIM CONSTRUCTION - Egyptian Goddess v. Swisa <ul><li>A hollow tubular frame of generally square cross section, where the square has sides of length S, the frame has a length of approximately 3S, and the frame has a thickness of approximately T = 0.1S; the corners of the cross section are rounded, with the outer corner of the cross section rounded on a 90 degree radius of approximately 1.25T, and the inner corner of the cross section rounded on a 90 degree radius of approximately 0.25T; and with rectangular abrasive pads of thickness T affixed to three of the sides of the frame, covering the flat portion of the sides while leaving the curved radius uncovered, with the fourth side of the frame bare. </li></ul>D467,389
    35. 35. Egyptian Goddess v. Swisa <ul><li>A design is better represented by an illustration than by a description </li></ul><ul><li>District court is not obliged to nor is it preferable to attempt to construe claim by providing a detailed verbal description </li></ul><ul><li>Left to the court’s discretion the level of detail to be used </li></ul><ul><li>Trial Court may also find it useful to address other issues that bear on the scope of the claim, e.g. broken lines, prosecution history, distinguishing between functional and non-functional features </li></ul><ul><li>Absent a showing of prejudice, a detailed description will not be reversible error </li></ul>
    36. 36. DESIGN PATENT CLAIM CONSTRUCTION EXAMPLES Post-Egyptian Goddess
    37. 37. Richardson v. Stanley Works, Inc. --- F.3d ----, 2010 WL 774334 (Fed. Cir. 2010) <ul><li>Richardson held a design patent on a multi-function carpentry tool that combines a hammer with a stud climbing tool and a crowbar. </li></ul><ul><li>Stanley Work manufactured </li></ul><ul><li>a similar tool </li></ul><ul><li>Richardson asserted that </li></ul><ul><li>Stanley Works infringed </li></ul><ul><li>the “Stepclaw” </li></ul>
    38. 38. <ul><li>Where design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design. </li></ul><ul><li>Proper to factor out the functional aspects of design </li></ul><ul><li>Design patent limits protection to the ornamental design of the article. </li></ul>Richardson v. Stanley Works, Inc . --- F.3d ----, 2010 WL 774334 (Fed. Cir. 2010)
    39. 39. Richardson v. Stanley Works, Inc Court Opinion <ul><li>Richardson’s claim contained many functional elements such as the jaw has to be located on the opposite end of the hammer head to permit use as a step. Crowbar needs to be on the end of the long handle to reach into narrow spaces. </li></ul><ul><li>A claim to a design containing numerous functional elements necessarily mandates a narrow construction. </li></ul>
    40. 40. Richardson v. Stanley Works, Inc --- F.3d ----, 2010 WL 774334 (Fed. Cir. 2010) <ul><li>Ignoring the functional elements, Fed Cir found designs were different. </li></ul><ul><li>Stanley tool was streamlined visual theme that includes tapered hammer-head, streamlined crow-bar, a triangular neck with rounded surfaces and a smooth contoured handle. Overall a more rounded design. </li></ul><ul><li>Patented design has fewer blunt edges </li></ul>04/17/10                             Patented Design (Above)                                                        Stanley Works Design (Above)
    41. 41. Richardson v. Stanley Works, Inc <ul><li>The ordinary observer test similarly applies in cases where the patented design incorporates numerous functional elements. </li></ul><ul><li>In evaluating infringement, we determine whether “the deception that arises is a result of the similarities in the overall design, not of similarities in ornamental features in isolation.” </li></ul><ul><li>Federal Circuit affirmed the district court’s judgment that Stanley did not infringe. </li></ul>04/17/10
    42. 42. International Seaway v. Walgreens 589 F.3d 1233 <ul><li>International Seaway filed for Design Patent Infringement U.S. Design Pat. D529,263, D545,032, and D545,033. </li></ul><ul><li>The district court granted summary judgment for defendants by expanding the holding in Egyptian Goddess finding that the claims of the asserted patents were invalid under 35 U.S.C. § 102 as anticipated by a Design patent assigned to Crocs, Inc. (“Crocs”), Patent No. D517,789 (“the Crocs ’789 patent”). </li></ul>
    43. 43. International Seaway v. Walgreens 589 F.3d 1233 Figure 1 of Crocs ‘789 Patent (Prior Art ) Figure 1 of Seaway’s ‘263 Patent Figure 2 of Crocs ‘789 Patent (Prior Art) Figure 2 of Seaway’s ‘263 Patent
    44. 44. Figure 6 of Crocs ’789 Patent Figure 6 of Seaway’s ’263 Patent International Seaway v. Walgreens 589 F.3d 1233
    45. 45. <ul><li>This presentation has been prepared for discussion purposes only in connection with this educational presentation. Illustrative scenarios were prepared to encourage group participation and discussion. None of the material contained in this presentation represents the views or opinions of Banner Witcoff, LTD or sponsoring organization. </li></ul><ul><li>This presentation is not intended to be used in litigation. As stated above, the context of this presentation is educational and not specific to any particular litigation. Because each intellectual property litigation is specific to its own fact situation; it would be unwise and even misleading to take a passage of static words or slides from this presentation and assume that it can be applied to a particular circumstance without applying reasoned judgment to the specific facts and circumstances of the situation. </li></ul>Disclaimer – For Illustrative Purposes Only
    46. 46. QUESTIONS <ul><li>THANK YOU </li></ul>

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