Monday
Jun102013

Keurig v. Rogers: Dismissed on Summary Judgment

Following up on our earlier post, Keurig’s suit against Rogers Family Co. (“Rogers”) has been dismissed on summary judgment.  The district court granted Rogers’ motion for summary judgment of non-infringement of U.S. Patent No. D502,362 and two utility patents.

In a Memorandum and Order on Summary Judgment (“Order”), the court compared the accused product with the claimed design in order to determine if the two are plainly dissimilar.  The following is a comparison provided on page 12 of the Order:

Although no written construction of the design patent claim was given in its Markman ruling, the court did analyze several features of the claimed design on summary judgment to determine if they were functional.  The court reviewed affidavits filed in support of summary judgment briefing and provided comments on the experts’ opinions.  Regarding the round shape of the lid, the tapered shape of the filter, and depending skirt, Keurig’s expert opined that alternative shapes could have been used for the design.  Regarding the tapered shape, “the Court finds that general tapered shape of the filter does ‘[a]ffect the quality of the [beverage cartridge],’ and therefore is a functional aspect of the patented design that cannot be considered in the comparison.” Order at 16.  However, the court further noted that “the specific shape of the tapered filer remains a relevant point of comparison.” (emphasis in original).  The remaining aspects were treated as ornamental.

After a detailed comparison that highlighted certain similarities and differences between the claimed design and the accused product, the court found that the overall designs are plainly dissimilar.  The court stated that the filter in the accused produce is more or less hemispherical and the claimed filter is shaped like a triangular prism.  This difference was important as the filter was found by the court to be the most prominent feature.  The court noted that, “[i]n contrast to Crocs, the Court is confident that ‘[i]f the claimed design and the accused designs were [scrubbed of all identifying logos] and mixed up randomly ... an ordinary observer could [in fact] properly restore them to their original order without very careful and prolonged effort.’” Order at 17-18.  The court granted Rogers’ motion for summary judgment of non-infringement of U.S. Patent No. D502,362.

Monday
Jun102013

IP Chat Channel - Design Patent Prosecution: Advanced Topics

On May 23, 2013, the IPO held a webinar on its IP Chat Channel called "Design Patent Prosecution: Advanced Topics," hosted by Pamela Sherrid.

Katie Maksym, design patent manager for Nike, Inc. first presented "Best Practice Tips from the Field of Play." Ms. Maksym highlighted the role of infringement awareness as a source of information to draft claims.

Christopher V. Carani, Esq., partner at McAndrew, Held & Malloy, Ltd. presented "‘Design Patent Prosecution: Advanced Topics," covering prosecution techniques.  Mr. Carani discussed including line representations with broken or indeterminate break lines, a well as the advantages and disadvantages of filing multiple applications, continuations, and one application with multiple embodiments.

Joel Sincavage, supervisory design patent examiner at the USPTO, and Teaching Quality Assurance specialist, presented "Written Description Requirement in Designs." In reference to concerns expressed by practitioners at Design Day 2013, Mr. Sincavage indicated that the USPTO was currently making arrangements for a town hall or roundtable type meeting to discuss the written description requirement.

In re Owens, 710 F.3d 1362 (Fed Circ 2013) and Munchkin, Inc. v. Luv N’ Care, Ltd, Case IPR 2013 -0082 (USPTO 2013) were discussed by both Mr. Carani and Mr. Sincavage.

A Q&A session followed the presentations.

Monday
Apr292013

Design Day 2013

The 7th annual Design Day took place on April 23, at the USPTO. In attendance were about 80 USPTO employees, and roughly 200 exterior stakeholders. Robert Spear, Supervisory Patent Examiner for Technology Center 2900 ("TC 2900"), was the Master of Ceremonies. The theme for Design Day 2013 was “Designs in the New Digital Age.”

To start the day, Margaret Focarino, Commissioner for Patents at the USPTO, gave an overview of the goals for TC 2900. She noted that for the second year in a row, the focus for TC 2900 was on eliminating the case backlog for filings prior to October 2011. Progress was acknowledged. With this goal in mind, and an increase in design filings, Ms. Focarino indicated that Examiners may be added to TC 2900.

Next, the Director of TC 2900, Robert Olszewski, gave a presentation on the State of TC 2900, focusing on personnel. Mr. Olszewski indicated that of the 102 Examiners in TC 2900, 76 were Primary Examiners, showing that Design Examiners are progressing. In addition, 56 Examiners are telecommuting, making TC 2900 the art unit with the highest telecommuting percentage.

Joel Sincavage, Design Practice Specialist of TC 2900, presented “More About the Written Description Requirement of 35 U.S.C. § 112(a).” Mr. Sincavage provided several examples of design cases comprising both original and amended drawings, where an amendment was enabled in the original drawings, but not described. For instance, an example consisted of a baby bottle holder with two handles, in solid lines in the original drawing, but later amended to include one handle in solid lines, and the second handle in shadow lines. Mr. Sincavage indicated that in such cases careful examination would be required to determine, on a case by case basis, whether the written description requirement was met. A spirited discussion ensued, and Mr. Sincavage noted that he would report elements of the discussion to the USPTO legal affairs department for further discussion.

Following a break, David Gerk, Patent Attorney at the Office of Policy and External Affairs, and Darrell Mottley, Shareholder at Banner & Witcoff, presented on the U.S. implementation of the Hague Agreement. Mr. Gerk reviewed the procedure for filing an application under the Hague Agreement, noting that while all applications, direct or indirect, would be initially reviewed by the International Bureau, substantive examination would be carried out by the contracting party. Thus, while 100 embodiments may be filed in one application under the Hague Agreement, the USPTO would remain consistent with its restriction practice. Mr. Mottley addressed several implementation issues currently being discussed between WIPO and the PTO, noting WIPO’s willingness to work to synchronize the U.S. system with the Hague. For example, WIPO currently lacks the ability to file disclosures, oaths or declarations. WIPO also does not provide e-notification of rejections, which could leave Applicants with a short time period to respond. Mr. Mottley noted that a decision to file under the Hague would likely be based on multiple considerations such as secrecy, speed of examination, and a country’s specific IP strategy. In response to questions, Mr. Gerk indicated that a rule packet was being prepared. He also noted that Japan, Korea and China were in discussions with WIPO to become parties to the Hague Agreement.

Masashi Omine, Deputy Director of the Design Policy Section at the Japanese Patent Office presented an “Outline of the Design System in the JPO, History, and Recent Developments in GUI practice before the JPO”. Mr. Omine reviewed elements of Japanese design applications, and gave a brief overview of changes in the JPO Design Examination Guidelines from 1986 to 2011, implemented to better protect GUIs. Mr. Omine stated that a Design System Subcommittee at the JPO is investigating a possible entry into the Hague Agreement.

To conclude the morning’s presentation, Tracy-Gene Durkin, Director of Sterne Kessler Goldstein & Fox P.L.L.C, presented “Design Patents in Reexamination: A Look Back at the Last Ten Years and at the Future.” Ms. Durkin noted that between 2005 and 2010 Design Patents constituted 2% of Ex Parte reexams, and 1% of Inter Partes reexams. She indicated that with the AIA increasing the amount of qualifying prior art, the number of design patent post grant proceedings may increase.

The afternoon sessions of Design Day 2013 began with a joint presentation focusing on protecting GUI designs by Andrew Sanders from Microsoft and Robert Katz of Banner & Witcoff.  Mr. Sanders discussed certain Microsoft products and related design patent filings.  Mr. Sanders noted that his company is seeking to protect animation and gave a Snap animation demo.  Lastly, Mr. Sanders explained that design patent protection is important to his company, and often is used in situations that do not end up in the news.  Mr. Katz’ portion of the presentation focused on capturing and protecting the user experience.

The next presentation was by Charles Mauro of Mauro New Media.  Mr. Mauro gave a presentation on The Increasing Importance of GUI in the Digital Age.  Mr. Mauro’s presentation included a history of GUI and future implementations.  Mr. Mauro also discussed modern design and the problem with protecting those designs with the intellectual property rights that are currently available.

Cathron Brooks, a SPE in TC2900, gave a presentation titled Overview of USPTO Examination Practice for Icon and Graphical User Interface Applications.  The presentation by Ms. Brooks outlined the procedures that design patent examiners go through to search for GUI and icon applications.  Ms. Brooks noted that there are currently 11 primary examiners that examine GUI and icon applications that that these examiners work as a team and have regular meetings to discuss examination procedures.

A question and answer session with the afternoon’s presenters followed.  Of interest to practitioners, Joel Sincavage stated that the publications department has an agreement to use SCORE drawings when available, regardless of whether the Examiner has asked them to or not.

The final presentation of the day was given by Elizabeth Ferrill of Finnegan, Henderson, Farabow, Garrett & Dunner.  Ms. Ferrill gave an overview of the design patent judicial decisions from the last year.  This overview included a discussion on the Apple v. Samsung litigation.  Ms. Ferrill then discussed several Federal Circuit and district court cases that involve design patents.

The various discussions during Design Day 2013 were interesting, sometimes heated, and very informative.  They certainly emphasize that U.S. design patent practice is constantly changing and the increasing importance of design patents.  Please check our blog frequently for the latest updates.

Colin B. Harris <CHarris@oblon.com>

Anne-Raphaelle Aubry <AAubry@oblon.com>

Friday
Apr192013

Yummie Tummie Sues Spanx for Design Patent Infringement

On April 2, 2013, Yummie Tummie sued fellow shapewear maker Spanx in the U.S. District Court for the Southern District of New York for patent infringement of six of its design patents.  The suit follows Yummie Tummie’s cease and desist letter from earlier this year and Spanx’s own complaint for declaratory judgment of non-infringement against Yummie Tummie filed last month in the U.S. District Court for the Northern District of Georgia. 

In its complaint (Case 1:13-cv-02157-AKH), Yummie Tummie asserted that Spanx’s products, including “The Total Taming Tank A226764,” the “Top This Tank Style 1847,” and “The Top This Cami Style 1846,” infringe the following U.S. design patents: D606,285; D616,627; D622,477; D623,377; D665,558; and D666,384.  The complaint did not include exhibits illustrating Spanx’s at-issue products, but Figures 1 and 3 of Yummie Tummie Design Patent D606,285 are provided below for visual context.

Yummie Tummie seeks damages and/or a disgorgement of Spanx’s total profits as well as its customers’ profits for patent infringement.  Yummie Tummie also seeks an injunction preventing Spanx from making, using, selling, or offering to sell, and from contributing to and inducing others to make, use, sell, or offer to sell Yummie Tummie’s patented designs without permission.

Wednesday
Apr102013

Hague Agreement (Guest Post)

Further to our prior coverage of the implementation of the Hague Agreement, we are pleased to publish the following from Audrey Pastoret, a guest of ours from France.

The Patent Law Treaties Implementation Act of 2012 signed by President Obama on December 18, 2012 implements the Hague Agreement in the United States. It is intended to provide industrial designs with protection in states and governmental organizations parties to this arrangement through a single international application effected at the WIPO. Before the Hague Agreement, an application had to be filed in every country where protection was desired, resulting in several applications being filed for a single design patent. Under the Hague agreement a single application can provide protection in multiple countries.

An international application under the Hague Agreement does not require a prior national deposit, and can be filed either at the WIPO or at the national office. The application may be in English, French or Spanish.

When filing an application under the Hague Agreement, one must either be a citizen of a Contracting Party or a Member State of an international organization that is a Contracting Party. Alternatively, one must have either a residence or an habitual residence on the territory of a Contracting Party, and one must have an effective industrial or commercial establishment on the territory of a Contracting Party.

The Hague Agreement consists of three International Treaties, but since 2010 only two of them are still enforced:  The Geneva Act (1999) and The Hague Act (1960). (The London Act of 1934 was frozen in 2012).

The Geneva Act and the Hague Act are independent from each other, such that one country can join one or both. Accordingly, when asking for protection under the Hague Agreement in several countries, it is crucial to confirm that those countries are parties to the same Act. The United States are party to the Geneva Act but not the Hague Act. Consequently, the United States can ask protection in countries party to the same act (the Geneva Act) but cannot ask for protection in a country which is party only to the Hague act.

The Hague Agreement increases the protection duration for design patents in the US from 14 years to 15 years. This increase in protection duration is based on an initial 5 year protection which may be renewed for an additional 5 years, every 5 years until the total protection is reached, in countries where protection is desired. The total duration of design patent protection may vary according to each country’s rules.

Under the Hague agreement, an international application may contain a maximum of 100 Designs. All designs must belong to the same Locarno classification, which is an International Classification for Industrial Designs. Application costs are expected to increase with the number of designs claimed.

Under the Hague Agreement, publication takes place six months after the date of the international registration. However, an applicant may request immediate publication or request a deferment of publication.

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