In particular, previously finding certain respondents in default, the ITC issued (1) a limited exclusion order against respondents' infringing products, and (2) cease and desist orders directed against each of the Defaulting Respondents. The following Toyo design patents, directed to tire tread designs and tire sidewall designs, formed the basis for the orders:
- US D487,424;
- US D610,976;
- US D610,977;
- US D626,913; and
- US D458,214.
Previously reported here, the orders followed Toyo's complaint filed August 14, 2013 and the ITC's subsequent decision to institute an investigation on September 16, 2013. As summarized in the Notice, the supplemented complaint alleged violation of section 337 by reason of infringement of the above-indicated design patents, as well as US D610,975; US D615,031; and US D653,200. The complaint and notice were subsequently amended to add Shandong Hengyu Science & Technology Co., Ltd. as a respondent, and several respondents were terminated from the investigation based on settlement agreements and consent orders.
It is important to remember that patent marking applies to design patents as well as utility patents. The Federal Circuit made this clear in Nike Inc. v. Wal-Mart Stores, 138 F.3d 1437 (Fed. Cir. 1998), by holding that the term “damages” as it appears in the marking statute, 35 U.S.C. § 287(a) applies to recovering the infringer’s profit under 35 U.S.C. § 289 as well as to the recovery of damages under 35 U.S.C. § 284.
In reaching their decision, the Court reviewed the statutory history of the damages and profits statutes for both design and utility patents, as well as the statutory history of the marking statutes. The Court found that the Patent Act of 1887, which was specific to design patents and removed the apportionment requirement when recovery of the infringer’s profit was sought, “was enacted to overcome the allocation problem for designs, and did not deplete the remedies available for either utility or design patent infringement.” Id. at 1441-43. Additionally, the Court found that the history of the marking statute supported the “conclusion that the marking statute with its use of the word ‘damages’ applies broadly to include recovery of the infringer’s profits under the special provision for design patent infringement.” Id. at 1445.
Consequently, the new America Invents Act (“AIA”) virtual marking provision, 35 U.S.C. § 287(a), is useful for design patent owners. The virtual marking provision states:
[p]atentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States may give notice to the public that the same is patented, either by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with the number of the patent, or by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address . . .
35 U.S.C. § 287(a) (emphasis added). Thus, an article covered by one or more patents, including design patents, need not list each individual patent that covers a product. Instead, the product can be marked with the word “pat.” and list a website where the patents applicable to the article in question may be listed.
Finally, design patent owners should also be aware that the false marking statute, 35 U.S.C. § 292, applies to design patents. See e.g. Marvellous Day Elec. (S.Z.) Co. v. Ace Hardware Corp., No. 11-8756, 2013 U.S. Dist. LEXIS 122212 (N.D. Ill. Aug. 27, 2013) (assessing whether Ace intended to deceive consumers into believing that Christmas lights advertised as “patented” were made or sold by Marvellous Day); Buehlhorn v. Universal Valve Co., Inc., No. 10-559, 2011 U.S. Dist. LEXIS 34429 (S.D. Ill. Mar. 31, 2011) (determining whether Universal Valve Co intended to deceive consumers by marking its products with an expired design patent number). Accordingly, it is important to remember to not mark products with a design patent number that does not cover the product or with the number of an invalid or expired patent.
Skechers USA filed a complaint against Fila in the Central District of California-Western Division, alleging infringement of US D661,884 and US D688,446, both directed to slip-on shoes, and alleging unfair competition and trade dress infringement of trade dress rights in Skechers Go Walk(R) shoe.
The complaint states a letter providing written notice of infringement was sent to Fila in July 2013, and in August 2013, Fila agreed to cease making the allegedly infringing shoe, the Amazen Memory Moc (referred to as "Version 1"). Allegedly, Fila stated it redesigned the Amazen Memory Moc (the redesign referred to as "Version 2") and agreed to cease manufacture of Version 1. However, the Complaint states Version 1 "is still available for purchase nearly one year after Skechers' written notice." Complaint, pages 3 and 20.
Version 1 is alleged to infringe the trade dress of the Skechers Go Walk(R) shoe as well as both US D661,884 and US D688,446, while Version 2 is alleged to infringe only US D661,884. Images from the complaint embodying the allegations are reproduced below:
[Trade Dress illustration: Skechers Go Walk(R) (top); Fila Amazen Memory Moc (Version 1) (bottom)]
On July 1, 2014, MRC Innovations filed a Petition for Writ of Certiorari in the Supreme Court of the United States. As we previously discussed on April 22, 2014, in MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 2013-1433 (Fed. Cir., Apr. 2, 2014), the Federal Circuit addressed the obviousness of patents (i.e., D634,488 and D634,487) covering ornamental designs for dog jerseys.
Figures from the ‘488 patent are reproduced below:
Figures from the ’487 patent are reproduced below:
MRC appealed a grant of summary judgment of obviousness of both patents issued by Judge Gaughan from the Northern District of Ohio. The Federal Circuit affirmed.
In the Petition, MRC proposes a question as to whether the principle set forth in KSR Int’l v. Co. v. Teleflex, Inc., 550 U.S. 398 (2007), "that when making an obviousness determination under 35 U.S.C. § 103 a court must provide an explicit analysis regarding whether there was an apparent reason to combine the known elements in the fashion claimed by the patent, also applies to design patents." Petition, page i.
The Petition argues "[a]s properly noted by the Federal Circuit more than 30 years ago, '35 U.S.C. § 103 (and all the case law interpreting that statute) applies with equal force to a determination of the obviousness of either a design or utility patent.' Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1441 (Fed. Cir. 1984)," but that "the Federal Circuit has significantly departed from this Court’s case law regarding 35 U.S.C. § 103 insofar as design patents are concerned." Petition, page 5.
Citing to KSR, the Petition argues that instead of a court providing "an explicit analysis explaining the apparent reason to combine known elements in the fashion claimed by the patent" for design patent cases, the Federal Circuit has rather relied on a "'so related' test in design patent cases that, when applied, entirely dispenses with the requirement that the court articulate whether there was an apparent reason (i.e., a “basis”) to combine the known elements in the fashion claimed by the patent." Petition, pages 5-6.
In summary, MRC is arguing that the court must articulate a rationale for combining teachings of the prior art to arrive at the claimed design. In utility patent cases, this "rationale" must be articulated, consistent with KSR. See the exemplary rationales identified in MPEP 2143.
The Petition argues that the Federal Circuit erred by merely requiring that certain elements of the claimed design be found in a related prior art, and that such a "so related" test is an "over simplification that substitutes relatedness for obviousness." Petition, page 18.
In some aspects, it appears MRC is arguing that the Federal Circuit applied a test similar to determining whether a prior art reference is analogous art. In re Klein, 98 USPQ2d 1991 (Fed. Cir. June 2011), established two tests for determining whether a reference is analogous and thus qualifies as prior art for an obviousness determination, citing to In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004):
Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.
The USPTO issued examination guidance in view of In re Klein on July 26, 2011, which emphasized that a "reference not in the same field of endeavor as the claimed invention must be reasonably pertinent to the problem to be solved in order to qualify as analogous art and be applied in an obviousness rejection."
Turning back to the "so related" test discussed in the Petition, this test appears to be a summarization of the analogous art tests discussed above. Specifically, a reference is "so related" when it is in the same field of endeavor (first test) or when the reference is reasonably pertinent to the particular problem with which the inventor is involved (second test). For design cases, this second test may have limited applicability, because evaluation of the issue (at least as established by the USPTO in the examination guidance) requires a review of the problem to be solved by the claimed design, which may be difficult given there is generally no detailed discussion of problems in design applications.
However, merely concluding a prior art reference that teaches a specific design element is in the same field of endeavor, and is thus "so related," does not result in a proper and complete conclusion of obviousness. Specifically, the Supreme Court in KSR, 550 U.S. at 418, quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated “rejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”
Consequently, it appears MRC is arguing that the Federal Circuit merely applied a test to determine whether a prior art reference is analogous (i.e., "so related") in determining whether prior art design elements can render a design obvious, without establishing an "articulated reasoning" for combining the prior art design elements to arrive at the claimed design. Specifically, the Petition argues the “'so related' test allows for ... random picking and choosing of elements from the prior art without articulating any reasons or basis for doing so," and is thus not in accordance with the principle of KSR.