History of U.S. Design Protection

An interesting article on design patents has been recently written by Jason DuMont of the Max Planck Institute for Intellectual Property & Competition Law and Mark Janis of the Indiana University Maurer School of Law.  The article, entitled “The Origins of American Design Protection,” traces the origins and progression of U.S. design protection, and calls for a return of design protection in the U.S. back to its roots (although the U.S. Congress is not currently contemplating any such changes).

The Abstract of the article is as follows:

Design patent protection is the oldest American form of intellectual property protection for ornamental designs, but still the most enigmatic. Congress passed the first design patent legislation in 1842, operating on the assumption that existing rules for utility patents could be incorporated en masse to protect designs. This Article questions that assumption. Drawing on new archival research and historical analysis, this Article demonstrates for the first time how the design patent system originated. We analyze the international trade aspects of the first design patent legislation, linking the legislation with a brief burst of protectionist measures associated with the Whig party. We also examine technological innovations that ushered in the first major era of American industrial design in key antebellum industries, and we analyze lobbying efforts on behalf of those industries that led to proposals for early design protection, proposals that did not assume the incorporation of patent rules. We also prove for the first time how the American design patent system originated as a knock-off of British copyright and registered design legislation, and why the American system was likely forced into a patent rubric. Finally, we conclude by offering concrete suggestions for the courts and Congress to ease the design patent system back to its original roots.

The full article is accessible here.

Any opinions and conclusions expressed in the article are solely those of the authors and should not be construed as representing the opinions or policy of Oblon Spivak.


Apple and Nokia Agree to Settlement of All Patent Litigation

We’ve discussed Apple’s ongoing litigation with Samsung here and here involving Apple’s design patents and trade dress.  This litigation is a battle being fought within a bigger international war between major technology companies, and illustrates how design rights can be a useful weapon within a well-rounded legal arsenal.

Within this context, today comes word that Apple and Nokia have agreed to a settlement of all patent litigation between the companies.  The agreement includes a one-time payment and ongoing royalties to be paid by Apple.  Though specific amount and length details of the settlement agreement are not disclosed, the amount of the settlement has been reported to be large enough to materially improve Nokia’s quarterly earnings.

This litigation began in October 2009 when Nokia filed a patent infringement lawsuit against Apple alleging that the wireless technology used by Apple in products such as the MacBook and iPhone violate patents owned by Nokia.  Apple responded with its own lawsuit against Nokia in December 2009 for allegedly violating several patents owned by Apple.  Both companies also subsequently filed complaints against each other in Europe (as with Apple and Samsung) and in the ITC (detailed here).

Although no design patents appear to have been involved in the litigation between Apple and Nokia, Apple had asserted infringement claims against Nokia related to patents directed to user interface technology.  See, for example, Apple’s U.S. Patent No. 6,239,795 (“Pattern and color abstraction in a graphical user interface”). 

Figs. 2D and 2E of U.S. Patent No. 6,239,795


Microsoft v. i4i: Presumption of Validity Standard Affirmed

As reported in Oblon Spivak’s Patents Post-Grant blog, the Supreme Court of the United States recently reinforced the well established principle that clear and convincing evidence is required to establish invalidity of a U.S. Patent.  Microsoft Corp. v. i4i Ltd. Partnership et al., 564 U.S.___ (June 9, 2011).  See holding here.

This “presumption of validity” is not limited to utility patents, but also extends to design patents.  For example, as noted in Titan Tire Corp. v. Case New Holland Inc., 566 F3d 1372 (Fed. Cir. 2009), a design patent case that related to the design of tractor tires, “an issued patent comes with a statutory presumption of validity under 35 U.S.C. § 282.  Because of this presumption, an alleged infringer who raises invalidity as an affirmative defense has the ultimate burden of persuasion to prove invalidity by clear and convincing evidence, as well as the initial burden of going forward with evidence to support its invalidity allegation.”  Id. at. 1376.

This is good news for design patent holders, as the presumption of validity makes it more difficult for an infringer to invalidate an issued design patent.


Court of Appeals Changes Standards for Inequitable Conduct

The Court of Appeals for the Federal Circuit recently released its long-awaited decision in Therasense, Inc. v. Becton Dickinson and Co., in which it raised the standard for proving inequitable conduct and rendering a patent unenforceable.  The decision makes it more difficult for accused infringers to prove the two elements required for inequitable conduct, namely (i) that the patent applicant withheld “material” information (i.e., important or relevant information) from the patent examiner, or the applicant submitted material information that was false or misleading, and (ii) the applicant intended to deceive the Patent Office by withholding material information or submitting the material information that was false or misleading.

The defense of inequitable conduct also applies to design patents.  Last year, we reported on a design patent litigation where this defense was raised.

With respect to the first element of materiality, the Court of Appeals redefined the type of information that can potentially support a defense of inequitable conduct if it is withheld, misleading, or incorrect -- i.e., what constitutes “material” information.  Under the new standard, information is material only “if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.”  The Federal Circuit refers to this as the “but-for” standard.

With respect to the second element of intent, the Federal Circuit generally adopted the intent standard from Star Scientific Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008), and clarified that an accused infringer must prove by clear and convincing evidence that the applicant:

a)   knew of the reference;
b)   knew that it was material; and
c)   made a deliberate decision to withhold it.

The Court’s adoption of a “but-for” standard for materiality is most noteworthy, and is consistent with the Court’s ongoing efforts to curb the “plague” of inequitable conduct allegations in patent litigation, and their negative effects on the PTO, courts, parties, and patents. 

Of the eleven judges who decided this case, six supported the majority opinion, one submitted an opinion concurring-in-part and dissenting-in-part, and four dissented.  Accordingly, it is possible that the U.S. Supreme Court will further address the issues raised in this case.  From a practical point of view, therefore, it is not recommended to change procedures with regard to design patent prosecution.  All U.S. Patent and Trademark Office rules still must be followed, including disclosing material information from domestic and foreign prosecution that is related by family or subject matter, as well as related litigation.

Please click here for a more detailed reporting on this decision.


Maker of Generic Products: Alleged Copying of Procter and Gamble’s Scope Outlast Mouthwash Packaging

Seeking an injunction, statutory damages, and/or defendant’s profits, The Procter & Gamble Company (P & G) sued Vi-Jon, Inc., a generic-products manufacturing and distribution company on May 27, 2011 in the Southern District of Ohio Western Division for patent and trademark infringement as well as unfair competition.. See Complaint here.

In August of 2009, P & G introduced a new line of mouthwash products under the SCOPE ® OUTLAST ® brand that features a teardrop shape bottle. (U.S. Trademark Application Serial No. 77/685,052 filed March 6, 2009) along with its label.  P & G also asserts U.S. design patents related to the bottle design and labeling for the SCOPE ® OUTLAST ® product.  P & G claims to have spent millions of dollars on advertisement of the mouthwash in its SCOPE OUTLAST Bottle Design and Trade Dress shown below.

P & G alleges that Vi-Jon, Inc. introduced a new line of mouthwash products that intentionally includes packaging which infringes P & G’s design rights in the SCOPE OUTLAST Bottle. Below is a picture showing the Vi-Jon product (left) and the P & G SCOPE ® OUTLAST ® (right).

P & G alleges that the Vi-Jon product packaging contains the following characteristics:

  1. A bottle design that is virtually indistinguishable from P & G’s SCOPE OUTLAST Bottle Design.
  2. A “compare to” statement that uses P & G’s “SCOPE OUTLAST” brand name (without attribution) on the front label in blue lettering alongside additional blue and grey text.
  3. An image of splashing liquid on the front label like the splashing liquid image that is included in P & G’s SCOPE OUTLAST Trade Dress.
  4. A label with a shape that is confusingly similar to P & G’s label.
  5. A flavor identified as peppermint with the wording LONG LASTING prominently displayed near the word mouthwash further imitating P & G’s SCOPE OUTLAST Trade Dress.

It is worth noting that P & G has taken legal action twice previously against Vi-Jon, Inc. to protect their intellectual property rights for oral care products.

Kathleen Cooney-Porter, David H. Aleskow and Philippe Signore contributed to this post.