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, 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 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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By Colin B. Harris
| May 8, 2017
The U.S. Patent and Trademark Office (USPTO) held its 11th annual Design Day on April 25, 2017.  Andrew Hirshfeld, Commissioner for Patents, again kicked off this year's presentations with a welcome address and highlights.  Commissioner Hirshfeld also introduced Karen Young, Technology Center (TC) 2900's new director, who took over TC 2900 upon the retirement of former TC 2900 Director Robert Olszewski.

Director Young took the opportunity to introduce herself to the design patent community in attendance and wish former TC 2900 Director Robert Olszewski well in retirement.  Director Young then discussed the state of TC 2900, including statistical breakdowns of various metrics such as number of design patent application filings, backlog, pendency, and workforce, and a showcase of the design examiners in the Silicon Valley and Detroit satellite offices. 

David Gerk, Attorney-Advisor for the USPTO's Office of Policy and International Affairs, followed Director Young and discussed developments in international design protection.  Among other topics, Mr. Gerk discussed trends and developments in the Hague Agreement; various online resources pertaining to the Hague Agreement (e.g., Hague Express Database, USPTO, WIPO); topics from a recent meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) surrounding graphical user interfaces (GUIs)/icons/typeface; and ongoing projects for the Industrial Design 5 Forum (ID5) (ID5, generally speaking, is a forum focusing on "improving consistency in registration policies, cataloging office practices, promoting interoperable procedural frameworks, and protecting emerging designs such as graphical user interfaces (GUIs), animations and other new technology designs.").

Next, Todd Hunter, Director Copyright and Industrial Design Branch of the Canadian Intellectual Property Office (CIPO), provided statistics relating to industrial design application filings in Canada and discussed similarities/differences between industrial design practice in Canada and design patent practice in the United States.

Richard Stockton next presented on the topic of seeking early dismissal in design patent litigations.

The final discussion before the lunch break involved a panel of design examiners and design practioners discussing design patent prosecution best practices.  Notable issues addressed by the panel included why a preliminary amendment (PA) might be filed when filing a design patent application, objections/rejections based on broad titles and possible ways to prevent or overcome such objections/rejections, how to disclaim aspects of a photographic image, and appendices filed with design patent applications.    

The next presentation, after the lunch break, was given by Matthew Zacherle and Thomas Boshinski of WestRock Company, indicated to be the second largest paper packing company in the world. This presentation gave us a peek into the design process (from Mr. Zacherle, Senior Designer for WestRock) and some of the legal issues of working with designers (from Mr. Boshinski, Senior Counsel for WestRock).

The next presentation also focused on the interaction between industrial designers and intellectual property protection. Specifically, this presentation was a panel that explored how the fashion industry uses intellectual property to protect fashion designs, which can change and evolve very rapidly. Several of the presenters noted that fashion designers and fashion brands are investing in design patents.

After a short break, the presentations resumed with a mock argument that explored how prosecution can affect in claim interpretation and enforcement of design rights. The mock arguments were very well done and solicited quite a few laughs from the audience. However, the underlying message was serious; in each case, a seemingly inconsequential event during prosecution resulted in a judgement that was counter to the result that the audience expected. The takeaway was to always be thinking of how the decisions made in prosecuting a design application could affect future enforcement of the corresponding design patent.

The final presentation for Design Day 2017 was a summary of recent decisions by Joseph Anderson. Mr. Anderson provided an overview of decisions involving design patents from the Court of Appeals for the Federal Circuit and district courts, as well as the Patent Trial and Appeals Board.
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