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.


Trademark Trial and Appeal Board Finds Configuration of Pet Food Container Inherently Distinctive

On May 16, 2011, the Trademark Trial and Appeal Board reversed the refusal to register a mark (not precedential), filed by Mars, Inc. (U.S. Trademark Application Serial No. 77/727,119) that “consists of a three-dimensional configuration of packaging for pet food that consists of a round bowl-shaped, inverted and lacquered pet food container.  The top of the container has a center circle with rounded edges tapering to the sides with a wider larger lip at the bottom with various placement lines representing a lacquered finish. The inverted nature of the container and the lacquered finish are claimed as features of the mark.” See Opinion hereThe mark is shown below.

The Examining Attorney refused to register the mark on the ground that the mark “consists of a non-distinctive configuration of product packaging for pet food that is not registrable without sufficient proof of acquired distinctiveness.” Further, the Examining Attorney submitted excerpts from websites displaying various pet food containers to support his argument that the mark to be registered is a common basic shape or design for pet food packaging.

The Board applied the test used in Seabrook Foods, Inc. v. Bar-Well Foods Limited, 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977) to determine whether Mars, Inc.’s configuration of packaging for pet food is arbitrary or distinctive.  The factors the Board considered in determining whether a design is arbitrary or inherently distinctive are:

1. Whether the subject matter sought to be registered is a “common” basic shape or design;

2. Whether the subject matter sought to be registered is unique or unusual in a particular field;

3. Whether the subject matter sought to be registered is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or

4. Whether the subject matter sought to be registered is capable of creating a commercial impression distinct from the accompanying words.

The Board concluded that the Examining Attorney placed too much attention on the round bowl shape and did not focus on the other elements of the bowl including the inverted nature and lacquered finish. The Board stated, “the proposed mark engenders the commercial impression of a serving platter and cover holding a gourmet meal for a pet.” Further, the evidence provided by the Examining Attorney did not show that Mars, Inc.’s configuration of packaging for pet food is not an unusual container for pet food nor that it is a refinement of a well-known design or ornamentation.

In conclusion, the Board did not feel that the Examining Attorney made a prima facie case that Mars, Inc. configuration of packaging for pet food is not inherently distinctive and is a common design.  The refusal to register was reversed.

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


Maria Pallante appointed Register of Copyrights and director of the U.S. Copyright Office

The Library of Congress announced today that Maria Pallante was appointed as the 12th Register of Copyrights and director of the United States Copyright Office, effective June 1, 2011.  The Librarian of Congress, James Billington, stressed "the increasingly important role of copyright law in the current knowledge economy and the numerous complex issues facing copyright owners as well as users of copyrighted materials. He noted the particular challenges of protecting authors’ intellectual-property interests in the online environment and achieving meaningful exceptions and limitations that serve the public interest in the 21st century."
Copyright has its role in protecting designs, even if it can be difficult to meet the requirement of the Copyright Act.  Under the Act, the design of a useful article is protectable "only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101.  The task, however, is not insurmountable.  For example, last year, the U.S. Court of Appeals for the Fourth Circuit affirmed an $11M damage award in a copyright infringement case involving furniture designs.  See opinion (pdf)We will continue to report on new developments in design protection by copyright.  In the meantime, we congratulate Ms. Pallante for her new appointment.  The press release from the Library of Congress can be found here.