ABA-IPL: April 2-4, 2014

The American Bar Association (ABA)’s Section of Intellectual Property Law (IPL) will be holding its 29th Annual Intellectual Property Law Conference on April 2-4, 2014, at the Crystal Gateway Marriott Hotel, in Arlington, VA.  Of interest, on April 3rd at 1:45, conference participants will be able to attend a workshop entitled “The Rise of Design Protection: From Spoons & Carpets to Smartphones & Cars.” The ABA-IPL published this summary for the workshop:

Design protection has recently taken the spotlight due to some high-profile, high-stakes cases. Join these panelists for a practitioner-focused overview of design rights, where they will look into: why design patents require a different perspective from utility patents; what the most successful approaches are in prosecuting and litigating design patents; whether the approach to design rights in the U.S. is different from other countries undergoing such a surge.

The workshop will be moderated by Sarah Burstein, Professor at the Oklahoma University School of Law, Norman, OK.  The speakers will include:

Philippe Signore, Oblon Spivak, McClelland, Maier & Neustadt, LLP, Alexandria, VA

Damin Porcari, Ford Global Technologies, Dearborn, MI

Andrew Rawlins, Foley & Lardner LLP, Washington, DC

We hope to see you there!



The State Intellectual Property Office of China (SIPO) recently issued an order indicating that design patent protection for Graphical User Interfaces (GUIs) will soon be available in China.  The order, which provides amendments to a number of sections of the Guidelines for Patent Examination, follows as an update to a previously released draft amended version of the Guidelines for Patent Examination, and becomes effective on May 1, 2014.

Notably, designs directed to human-computer interactable GUIs, including dynamic or animated GUIs, will be protectable.  However, the new provisions exclude protection for designs not directed to a product’s function or human-computer interaction, such as wallpaper on an electronic screen, turn-on/turn-off screens and graphical layout and text of a webpage. 


Mulch v. Novel - Request for Declaratory Judgment

International Mulch Company, Inc. (Mulch) filed a complaint requesting declaratory judgment against Novel Ideas, Inc. (Novel) in the Eastern District of Missouri Eastern Division on March 11, 2014 (4-14-cv-00446).

In the complaint, Mulch requested a Declaratory Judgment of patent non-infringement and invalidity of two design patents owned by Novel, US D640,268 (’268) and US D654,191 (’191), both directed to flexible landscape edging.

Mulch stated that it began selling a lawn edging product to Lowe’s, and that Novel allegedly took the position that Mulch’s lawn edging product infringed the ’268 and ’191 patents.  Mulch further stated it had informed Novel that its product did not infringe Novel’s patents, and argued the ornamental design of their product differed from Novel’s patented design due to the product having an “appearance of variable sized cobblestones,” “a squared-off top,” “three holes for stakes,” and a “rounded inside corner.”

Figure 1 of the ‘268 patent is reproduced below:

In the complaint, Mulch stated Novel had allegedly “on information and belief, communicated directly to Lowe’s, taking the position that the [Mulch] lawn edging product being sold by Lowe’s infringe[d] the 268 Patent and the 191 Patent.” Mulch declared “apprehension that Novel will commence litigation” against Mulch and/or Lowe’s.

Mulch argued non-infringement of both the ’268 and ’191 patents, and stated that the alleged allegations of patent infringement “have placed a cloud over [Mulch’s] business, … are likely to cause [Mulch] to lose revenues and business opportunities, … and will likely cause irreparable injury to [Mulch].” Mulch further argued invalidity of both the ’268 and ’191 patents “due to functionality.”

In its prayer for relief, Mulch requested that Novel be prevented from “interfer[ing] in any way with [Mulch’s] manufacture, use, offer for sale, or sale of [Mulch’s] lawn edging product. A trial by jury was requested.

This case is ongoing.


Interim Rule Regarding Continued Prosecution Applications

The United States Patent and Trademark Office (Office) has adopted an interim rule, effective March 5, 2014, pertaining to Continued Prosecution Applications (CPAs), which are only available for design patent applications.

A CPA is typically filed when prosecution on the merits is closed in a design patent application.  For example, after the Examiner issues a final rejection in a design application, the Applicant may file a CPA in order to continue prosecution in front of the Examiner, instead of appealing the final rejection to the Patent Trial and Appeals Board.  A Request for Continued Examination (RCE) is not allowed in a design patent application.

The interim rule permits the filing of a CPA even if the prior design application does not contain the inventor's declaration if the CPA is filed on or after September 16, 2012, and the prior design application contains an application data sheet indicating the name, residence, and mailing address of each inventor.

The Leahy-Smith America Invents Act (AIA) generally revised and streamlined the requirements for the inventor's declaration.  In implementing the AIA inventor’s declaration provisions, the Office provided that an applicant may postpone the filing of the inventor’s declaration until allowance if the applicant provides an application data sheet indicating the name, residence, and mailing address of each inventor.

However, the rules pertaining to CPAs still required that the prior design application of a CPA be complete, which required that the prior design application contain the inventor's declaration.  The interim rule eliminates this requirement for CPAs in order to align CPA practice with the general provisions of the AIA.  Under the new rules, applicants no longer need to file the inventor's declaration in a prior design application in order to file a CPA of that application.

As a side note, the Office found "good cause to adopt the changes in this interim rule without prior notice and an opportunity for public comment, as such procedures are contrary to the public interest."


Skyline Design Patent Complaints

Skyline USA, Inc. (Skyline) recently filed two complaints asserting infringement of a design patent directed to a combined flashlight and stun gun.

In the first complaint filed February 7, 2014, Skyline alleged infringement by Cutting Edge Products, Inc. (Cutting Edge), in the Middle District of Florida, Orlando division (6:14-cv-212-ORL-36GJK).

The complaint relates to Design Patent No. D671,249 (‘249 patent), which issued November 20, 2012, and claimed a combined flashlight and stun gun. Figure 1 of the ‘249 patent, as shown in the complaint, is reproduced below.

In the complaint, Skyline alleges Cutting Edge offered to sell, and sold, combined flashlights and stun guns within the scope of the ‘249 patent.  Skyline further alleged the accused product shared the "distinctive overall appearance, which includes without limitation a scalloped bezel and distinctive handle" shown in the ‘249 patent.

Skyline asserts willful infringement by Cutting Edge of the ‘249 patent.  A representation of the alleged infringing Cutting Edge Product, as shown in the complaint, is reproduced below.

Skyline requested treble damages, an award of attorney fees, as well as prejudgment and post judgment costs.  Skyline also demands Cutting Edge be permanently enjoined from infringing the ‘249 patent.

Skyline filed a similar second complaint February 7, 2014, alleging infringement by M.A.S. Ga LLC d/b/a/ S&D Wholesale (S&D Wholesale), in the Middle District of Florida, Orlando division (6:14-CV-210-ORE-28K), regarding the ‘249 patent.

The complaint includes a side by side comparison of the ‘249 patent and of the S&D Wholesale product, and alleges the two share a "distinctive overall appearance, which includes without limitation a scalloped bezel and distinctive handle." A rear elevational view and a bottom plan view of the ‘249 patent and accused S&D Wholesale product, as shown in the complaint, are reproduced below.

Skyline asserts willful infringement by S&D Wholesale of the ‘249 patent, and made requests identical to those in its complaint against Cutting Edge.

Both of these cases are ongoing.