By Philippe Signore, Ph.D.
| May 25, 2018
Almost 16 years ago, we wrote an article in Managing Intellectual Property (Nov. 2002, Issue 124) entitled U.S. DESIGN PATENTS: AN UNDERDOG THAT BITES. The article explained that companies had previously overlooked design patents, focusing instead on trade dress protection and utility patents. Yet, design patents provide their owners with the additional option of demanding the infringer's total profits under 35 USC 289. “This option may be advantageous, for example, when the infringer's total profits are substantially greater than any reasonable royalty.” “Companies are starting to appreciate the value of design patent protection and systematically consider whether their inventions deserve such protection.” Apple was such a company.
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By Colin B. Harris, Patrick L. Miller, Monica Yoon & Brian D. Fisher, Jr.
| May 4, 2018
The U.S. Patent and Trademark Office (USPTO) held its 12th annual Design Day on April 25, 2018. 

9:00-9:15 - "Welcome and Kick-off" - Andrei Iancu, the new Director of the USPTO, kicked off this year's event with a welcome address.

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By David M. Longo, Ph.D.
| February 16, 2018
A few years ago, I wrote an article (available here) about Deckers’ mixed success in a 2014 lawsuit against retailers JC Penney, Wal-Mart, Sears, and Dreams Footwear, for design patent infringement, trade dress infringement, and unfair competition, among other asserted causes of action, in the U.S. District Court, Central District of California. Since then, Deckers has tangled its laces with many other defendants over similar issues—the majority of which were before the same court.

Well, Deckers hiked back to court on Valentine’s Day to profess that there is no love for those who might tread on their design patents. Deckers laced up another five pronged Complaint—this time against Reliable Knitting Works, Wal-Mart Stores, Inc., and 10 other unnamed defendants—and filed suit in the Central District of California. See Deckers Outdoor Corp. v. Reliable Knitting Works and Wal-Mart Stores, Inc., C.D. Cal., Case No. 2:18-cv-01217 (Feb. 14, 2018).
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By Patrick Miller
| February 2, 2018
GLO SCIENCE, INC. (“GLO SCIENCE”) recently asserted two design patents directed to mouthpieces against multiple parties in different jurisdictions. This is not the first time the two design patents have been asserted, however. The design patents have been asserted now at least eight times, leading to settlements in at least three of the cases. The multiple patent infringement suits and settlements, perhaps, underscore the valuable part design patents can play in a patent portfolio. As discussed before, some of the key advantages of design patents in the litigation context include that they are relatively difficult to invalidate, the alternative remedy of the “total profit” on an infringing “article of manufacture,” and injunction and exclusion order remedies.

Specifically, U.S. Patent Nos. D636,074 and D765,255 were asserted on January 30, 2018 against Oral Care Products, LLC in the U.S. District Court for the Southern District of New York (complaint) and against ANGELO DE SIMONE, TRUECOMPANY LIMITED, and MILLION DOLLAR SMILE, L.L.C in the U.S. District Court for the Southern District of California (complaint).
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By Andrew M. Ollis
| October 25, 2017
On October 22, 2017, Judge Lucy Koh ordered a new trial on design patent damages in the long-running dispute between Apple and Samsung playing out its latest chapter in the U.S. District Court for the Northern District of California. Case No. 11-CV-01846-LHK, ECF No. 3530 (“Order”).

After the U.S. Supreme Court held that an “article of manufacture” in 35 U.S.C. § 289 (damages provision specific to design patents) could apply to either an article sold to a consumer or a component of the product, the case was remanded to determine whether a new trial was needed on the $399 million award Apple had obtained for Samsung’s infringement of several design patents.

As part of her analysis, Judge Koh also had to determine a new test for design patent damages under Section 289. Rejecting the tests offered by both Apple and Samsung, Judge Koh adopted the government’s suggestion, stating in conclusion:
The test for determining the article of manufacture for the purpose of § 289 shall be the following four factors:
• The scope of the design claimed in the plaintiff’s patent, including the drawing and written description;
• The relative prominence of the design within the product as a whole;
• Whether the design is conceptually distinct from the product as a whole; and
• The physical relationship between the patented design and the rest of the product, including whether the design pertains to a component that a user or seller can physically separate from the product as a whole, and whether the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately.
The plaintiff shall bear the burden of persuasion on identifying the relevant article of manufacture and proving the amount of total profit on the sale of that article. The plaintiff also shall bear an initial burden of production on identifying the relevant article of manufacture and proving the amount of total profit on the sale of that article. If the plaintiff satisfies its burden of production on these issues, the burden of production shifts to the defendant to come forward with evidence of an alternative article of manufacture. Order at 35.

Judge Koh also observed that the government’s test had largely been adopted by the one other court confronted with the same question. Order at 21, citing Jury Instructions at 15-16, Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., No. 3:17-cv-01781-HZ (S.D. Cal. Sept. 9, 2017), ECF No. 378. 

A new trial is expected in May 2018.  Interestingly, both parties indicated they could generally accept the government’s test (see Order at 13-14, 20), suggesting that each side believes the test is sufficiently flexible to support their point of view. As with all developments in this case, the trial will be closely watched, and another appeal is all but certain absent settlement.
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