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.

Hague Agreement: A New Chapter for Protection of Industrial Design for the United States

On March 1, 2013, Teresa Stanek Rea (Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO) addressed the implementation of U.S. participation in the Hague Agreement on the Director’s Forum blog in "A New Chapter for Protection of Industrial Design for the United States."

The Patent Law Treaties Implementation Act of 2012, signed by President Obama, serves as the implementing legislation for both the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“the Hague Agreement”) and the Patent Law Treaty.

Under the Hague Agreement, industrial design patent filings will no longer be required for each jurisdiction.  Instead, a single English-language application can be filed directly with the World Intellectual Property Organization or indirectly with the USPTO, and can lead to protection in multiple designated member countries, including the European Union.

The new process is expected to result in cost savings and to facilitate design protection in multiple markets by small and medium sized businesses.

Design Day 2013

The seventh annual USPTO Design Day, which discusses current issues in design patent law, will take place on April 23, 2013. The program is open and free to all, but registration is recommended via:  http://2013designday.eventbrite.com/#

Recaps of Design Day 2011 and Design Day 2010:

Design Day 2011

Design Day 2010

In keeping with Design Day’s history of discussing recent trends in industrial design and their impact on design patent prosecution and global patent strategy, topics to be addressed this April include:

• How the USPTO is preparing to examine applications filed under the Hague Agreement,
• Rules and techniques relating to claiming icons and graphical user interface in the US and Japan,
• Value Microsoft places on its design patent portfolio,
• Design patents in post grant proceedings, and
• Best practices aimed at obtaining the strongest protection of industrial designs in the US.

A wrap up of important design patent decisions since Design Day 2012, including the Apple v. Samsung smart phone litigations, is expected to close the event.

Filing of certified copies of priority documents: no change for design patent applicants

On March 16, 2013, the First-Inventor-To-File (FITF) provisions of the America Invents Act (AIA) will become effective.  In preparation for the new statute, the USPTO published its final rules on the FITF on February 14, 2013. 

In general, these final rules relate to the statutory changes to the definitions of novelty and prior art.  One of the changes is that a U.S. patent or a U.S. patent application publication has a prior art effect as of the filing date of the foreign priority application for the subject matter disclosed in the priority document.  In reaction to this change, new Rule 37 CFR 1.55(f) will require applicants to systematically file a certified copy of the foreign application, or an interim copy of the foreign application, within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. 

Under pre-AIA rules, applicants only needed to file their certified copy at any time during prosecution, or if/when priority needed to be perfected in order to remove an intervening prior art.  The new rule is intended to ensure that a certified copy is placed in an application before its publication such that the priority document can be consulted in the event the U.S. application publication is considered prior art as of its priority date, for example by an examiner or a third party during the examination of another application filed under the AIA.

Of importance to design patent applicants, Rule 55(f) states that “[t]he time period in this paragraph does not apply in a design application.” This exception is consistent with the fact that design patent applications are not published.  Only design patents can become prior art. 

Thus, while there may be a need for an examiner of another AIA application or a third party to consult a priority document after a design patent issues, there would be no need to consult the priority document during prosecution of the design application.  Accordingly, design patent applicants can continue their current practice of filing their priority documents at any time during prosecution, for example with the payment of the Issue Fee.  Of course, there is no change to the practice of filing a certified copy of the priority document during prosecution if priority needs to be perfected, for example to remove an intervening prior art.