Design Day 2013

The 7^th annual Design Day took place on April 23, at the USPTO. In attendance were about 80 USPTO employees, and roughly 200 exterior stakeholders. Robert Spear, Supervisory Patent Examiner for Technology Center 2900 ("TC 2900"), was the Master of Ceremonies. The theme for Design Day 2013 was “Designs in the New Digital Age.”

To start the day, Margaret Focarino, Commissioner for Patents at the USPTO, gave an overview of the goals for TC 2900. She noted that for the second year in a row, the focus for TC 2900 was on eliminating the case backlog for filings prior to October 2011. Progress was acknowledged. With this goal in mind, and an increase in design filings, Ms. Focarino indicated that Examiners may be added to TC 2900.

Next, the Director of TC 2900, Robert Olszewski, gave a presentation on the State of TC 2900, focusing on personnel. Mr. Olszewski indicated that of the 102 Examiners in TC 2900, 76 were Primary Examiners, showing that Design Examiners are progressing. In addition, 56 Examiners are telecommuting, making TC 2900 the art unit with the highest telecommuting percentage.

Joel Sincavage, Design Practice Specialist of TC 2900, presented “More About the Written Description Requirement of 35 U.S.C. § 112(a).” Mr. Sincavage provided several examples of design cases comprising both original and amended drawings, where an amendment was enabled in the original drawings, but not described. For instance, an example consisted of a baby bottle holder with two handles, in solid lines in the original drawing, but later amended to include one handle in solid lines, and the second handle in shadow lines. Mr. Sincavage indicated that in such cases careful examination would be required to determine, on a case by case basis, whether the written description requirement was met. A spirited discussion ensued, and Mr. Sincavage noted that he would report elements of the discussion to the USPTO legal affairs department for further discussion.

Following a break, David Gerk, Patent Attorney at the Office of Policy and External Affairs, and Darrell Mottley, Shareholder at Banner & Witcoff, presented on the U.S. implementation of the Hague Agreement. Mr. Gerk reviewed the procedure for filing an application under the Hague Agreement, noting that while all applications, direct or indirect, would be initially reviewed by the International Bureau, substantive examination would be carried out by the contracting party. Thus, while 100 embodiments may be filed in one application under the Hague Agreement, the USPTO would remain consistent with its restriction practice. Mr. Mottley addressed several implementation issues currently being discussed between WIPO and the PTO, noting WIPO’s willingness to work to synchronize the U.S. system with the Hague. For example, WIPO currently lacks the ability to file disclosures, oaths or declarations. WIPO also does not provide e-notification of rejections, which could leave Applicants with a short time period to respond. Mr. Mottley noted that a decision to file under the Hague would likely be based on multiple considerations such as secrecy, speed of examination, and a country’s specific IP strategy. In response to questions, Mr. Gerk indicated that a rule packet was being prepared. He also noted that Japan, Korea and China were in discussions with WIPO to become parties to the Hague Agreement.

Masashi Omine, Deputy Director of the Design Policy Section at the Japanese Patent Office presented an “Outline of the Design System in the JPO, History, and Recent Developments in GUI practice before the JPO”. Mr. Omine reviewed elements of Japanese design applications, and gave a brief overview of changes in the JPO Design Examination Guidelines from 1986 to 2011, implemented to better protect GUIs. Mr. Omine stated that a Design System Subcommittee at the JPO is investigating a possible entry into the Hague Agreement.

To conclude the morning’s presentation, Tracy-Gene Durkin, Director of Sterne Kessler Goldstein & Fox P.L.L.C, presented “Design Patents in Reexamination: A Look Back at the Last Ten Years and at the Future.” Ms. Durkin noted that between 2005 and 2010 Design Patents constituted 2% of Ex Parte reexams, and 1% of Inter Partes reexams. She indicated that with the AIA increasing the amount of qualifying prior art, the number of design patent post grant proceedings may increase.

The afternoon sessions of Design Day 2013 began with a joint presentation focusing on protecting GUI designs by Andrew Sanders from Microsoft and Robert Katz of Banner & Witcoff.  Mr. Sanders discussed certain Microsoft products and related design patent filings.  Mr. Sanders noted that his company is seeking to protect animation and gave a Snap animation demo.  Lastly, Mr. Sanders explained that design patent protection is important to his company, and often is used in situations that do not end up in the news.  Mr. Katz’ portion of the presentation focused on capturing and protecting the user experience.

The next presentation was by Charles Mauro of Mauro New Media.  Mr. Mauro gave a presentation on The Increasing Importance of GUI in the Digital Age.  Mr. Mauro’s presentation included a history of GUI and future implementations.  Mr. Mauro also discussed modern design and the problem with protecting those designs with the intellectual property rights that are currently available.

Cathron Brooks, a SPE in TC2900, gave a presentation titled Overview of USPTO Examination Practice for Icon and Graphical User Interface Applications.  The presentation by Ms. Brooks outlined the procedures that design patent examiners go through to search for GUI and icon applications.  Ms. Brooks noted that there are currently 11 primary examiners that examine GUI and icon applications that that these examiners work as a team and have regular meetings to discuss examination procedures.

A question and answer session with the afternoon’s presenters followed.  Of interest to practitioners, Joel Sincavage stated that the publications department has an agreement to use SCORE drawings when available, regardless of whether the Examiner has asked them to or not.

The final presentation of the day was given by Elizabeth Ferrill of Finnegan, Henderson, Farabow, Garrett & Dunner.  Ms. Ferrill gave an overview of the design patent judicial decisions from the last year.  This overview included a discussion on the Apple v. Samsung litigation.  Ms. Ferrill then discussed several Federal Circuit and district court cases that involve design patents.

The various discussions during Design Day 2013 were interesting, sometimes heated, and very informative.  They certainly emphasize that U.S. design patent practice is constantly changing and the increasing importance of design patents.  Please check our blog frequently for the latest updates.

Colin B. Harris <CHarris@oblon.com>

Anne-Raphaelle Aubry <AAubry@oblon.com>

Yummie Tummie Sues Spanx for Design Patent Infringement

On April 2, 2013, Yummie Tummie sued fellow shapewear maker Spanx in the U.S. District Court for the Southern District of New York for patent infringement of six of its design patents.  The suit follows Yummie Tummie’s cease and desist letter from earlier this year and Spanx’s own complaint for declaratory judgment of non-infringement against Yummie Tummie filed last month in the U.S. District Court for the Northern District of Georgia. 

In its complaint (Case 1:13-cv-02157-AKH), Yummie Tummie asserted that Spanx’s products, including “The Total Taming Tank A226764,” the “Top This Tank Style 1847,” and “The Top This Cami Style 1846,” infringe the following U.S. design patents: D606,285; D616,627; D622,477; D623,377; D665,558; and D666,384.  The complaint did not include exhibits illustrating Spanx’s at-issue products, but Figures 1 and 3 of Yummie Tummie Design Patent D606,285 are provided below for visual context.

Yummie Tummie seeks damages and/or a disgorgement of Spanx’s total profits as well as its customers’ profits for patent infringement.  Yummie Tummie also seeks an injunction preventing Spanx from making, using, selling, or offering to sell, and from contributing to and inducing others to make, use, sell, or offer to sell Yummie Tummie’s patented designs without permission.

Hague Agreement (Guest Post)

Further to our prior coverage of the implementation of the Hague Agreement, we are pleased to publish the following from Audrey Pastoret, a guest of ours from France.

The Patent Law Treaties Implementation Act of 2012 signed by President Obama on December 18, 2012 implements the Hague Agreement in the United States. It is intended to provide industrial designs with protection in states and governmental organizations parties to this arrangement through a single international application effected at the WIPO. Before the Hague Agreement, an application had to be filed in every country where protection was desired, resulting in several applications being filed for a single design patent. Under the Hague agreement a single application can provide protection in multiple countries.

An international application under the Hague Agreement does not require a prior national deposit, and can be filed either at the WIPO or at the national office. The application may be in English, French or Spanish.

When filing an application under the Hague Agreement, one must either be a citizen of a Contracting Party or a Member State of an international organization that is a Contracting Party. Alternatively, one must have either a residence or an habitual residence on the territory of a Contracting Party, and one must have an effective industrial or commercial establishment on the territory of a Contracting Party.

The Hague Agreement consists of three International Treaties, but since 2010 only two of them are still enforced:  The Geneva Act (1999) and The Hague Act (1960). (The London Act of 1934 was frozen in 2012).

The Geneva Act and the Hague Act are independent from each other, such that one country can join one or both. Accordingly, when asking for protection under the Hague Agreement in several countries, it is crucial to confirm that those countries are parties to the same Act. The United States are party to the Geneva Act but not the Hague Act. Consequently, the United States can ask protection in countries party to the same act (the Geneva Act) but cannot ask for protection in a country which is party only to the Hague act.

The Hague Agreement increases the protection duration for design patents in the US from 14 years to 15 years. This increase in protection duration is based on an initial 5 year protection which may be renewed for an additional 5 years, every 5 years until the total protection is reached, in countries where protection is desired. The total duration of design patent protection may vary according to each country’s rules.

Under the Hague agreement, an international application may contain a maximum of 100 Designs. All designs must belong to the same Locarno classification, which is an International Classification for Industrial Designs. Application costs are expected to increase with the number of designs claimed.

Under the Hague Agreement, publication takes place six months after the date of the international registration. However, an applicant may request immediate publication or request a deferment of publication.

Oakley Inc. v. Hire Order, Ltd.

In Oakley Inc. v. Hire Order, Ltd. (3:12-cv-02346-DMS-WMC), the U.S. District Court of the Southern District of California issued an Order on March 28, 2013, denying Hire’s motion for partial summary judgment of non-infringement.

As shown in Exhibit B of the Complaint filed on September 26, 2012, Oakley, Inc. (Oakley) issued a letter to Hire Order, Ltd (Hire) on June 22, 2012, demanding that Hire cease sales of its Sportsman Eyewear video recording system.

The Complaint alleged willful and intentional infringement of Oakley's D523,461 (D461) Eyeglass Component design patent, requested a preliminary and permanent injunction, and requested that Hire pay damages for infringing acts and treble damages, profits from the alleged infringement, attorney fees and costs associated with this action.

Hire moved for partial summary judgment of non-infringement, while Oakley asserted that a genuine issue of material fact made the summary judgment inappropriate.

Reproduced below are Figure 1 of the D461 patent (top) and an image of an alleged Sportsman Eyewear infringing product (bottom).  The Court stated in the Factual Background section of the Order that the design of the D461 patent consisted of “an eyeglass frame with bulbous areas on each arm and buttons on each bulbous area.  The frames are curved and have ridges across the front bridge.  There is a dip in the nose bridge, which consists of an x-shaped piece that sits on the nose.”

As re-iterated by the Court, in determining infringement or non-infringement, the claim must first be properly construed to determine scope and meaning, before the properly construed claim can be compared to the accused device.

In addressing the first question, the Court declined to issue a verbal description of the D461 Patent, in accordance with the Supreme Court position that a design is better represented by an illustration “than it could be by any description.” The Court agreed with Oakley that the D461 patent should be construed as the ornamental design for an eyeglass component, as shown and described in Figures 1 through 6 of the patent.

In addressing the second question, the Court relied on the ordinary observer test to determine whether there was infringement.

As reported in the Order, Hire argued that its Sportsman Eyewear had “smooth arms while the arms on the claimed designs have a claw or rib-like pattern.” Hire further argued that buttons on the arms of the accused product were in different locations from the claimed design, and plain instead of ornate on the claimed design.  Hire also argued with respect to the position of the USB input port, and the presence of an additional Micro-SD input.  Finally, Hire stated that its Sportsman Eyewear lacked a scoop on the top of the nose bridge and an x-shaped protrusion on the nose bridge front.

As stated in the Order, Oakley asserted an “overwhelming similarity” between the accused product and claimed design, “or at a minimum, a question of fact sufficient to defeat summary judgment.”

The Court agreed with Oakley that Hire had not met its burden of proof to show non-infringement, since “‘mere differences of lines in the drawing or sketch … or slight variances in configuration … will not destroy the substantial identity,’” citing Egyptian Goddess, 543 F.3d at 670 (quoting Gorham, 81 U.S. at 625-27).

The Court stated that when viewed as a whole there was at least a genuine issue of material fact whether the accused product infringes the claimed design.

In re Owens (CAFC March 26, 2013)

The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion in In re Owens, affirming the BPAI’s rejection of Owens et al.'s design patent application 29/253,172.  The opinion at p. 2 states that the "’172 application, which is the subject of this appeal, is a continuation of U.S. Design Patent Application No. 29/219,709 (filed Dec. 21, 2004) (“’709 application”). The ’709 application claimed a design for a bottle," with boundaries as shown, e.g., in Figure 2 (left): 

Owens filed the ’172 application in 2006, seeking the benefit of the ’709 application’s 2004 priority date under 35 U.S.C. § 120.  The ’172 application claimed certain design elements found on the top and side portions of the original bottle, as depicted in Figure 2 (above, center).

The Examiner rejected the '172 application under 35 USC 112, ¶ 1, for including new matter, as well as being obvious in view of Owens' earlier-sold bottles (obviousness hinged on whether the '172 application was entitled to the benefit of the '709 application's filing date).  The BPAI affirmed the Examiner's rejection, finding that "Owens had claimed previously undisclosed 'trapezoidal sections occupying part, but not all, of the surface area of the front and back panels.'" See Figure 2, above, right.

Owens argued that the BPAI applied an incorrect written description test to his case because the '172 application did not claim a trapezoidal-shaped area at all, "insist[ing] that in order to claim a new design element, one must first claim a new boundary." The trapezoidal-shaped area identified by the Examiner was bounded by a broken-line boundary, an "unclaimed boundary," and it is "understood that the claimed design extends to the boundary but does not include the boundary." MPEP § 1503.02.

The CAFC characterized Owens’ arguments as being “premised on the notion that an applicant who has possession of an entire area in a parent application must likewise possess all parts of the area.”  The CAFC found that these arguments misconstrue its holding in In re Daniels, stating that “[i]t does not follow from Daniels that an applicant, having been granted a claim to a particular design element, may proceed to subdivide that element in subsequent continuations however he pleases.”

On the contrary, the CAFC stated that “the question for written description purposes is whether a skilled artisan would recognize upon reading the parent’s disclosure that the trapezoidal top portion of the front panel might be claimed separately from the remainder of that area. [Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)]." According to the court, “Owens’s parent application discloses a design for a bottle with an undivided pentagonal center-front panel, whereas the continuation claims only the trapezoidal top portion of that center-front panel.” Because the parent application did not suggest anything uniquely patentable about the top portion of the bottle, the CAFC affirmed the Board's decision.

When asked "whether, and under what circumstances, Owens could introduce an unclaimed boundary line on his center-front panel and still receive the benefit of § 120," the CAFC stated:

"In our view, the best advice for future applicants was presented in the PTO’s brief, which argued that unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure. Although counsel for the PTO conceded at oral argument that he could not reconcile all past allowances under this standard, he maintained that all future applications will be evaluated according to it."

Note that MPEP § 1503.02 indicates "[w]here no boundary line is shown in a design application as originally filed, but it is clear from the design specification that the boundary of the claimed design is a straight broken line connecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s) to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter." However, this would not have aided Owens, as a straight broken line would only have defined a larger trapezoidal area, resulting in the same written description problems.