Entries in design patents (76)

Monday
Mar102014

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."

Tuesday
Feb112014

Gillette Design Patent Enforcement

Over the past 6 months the Gillette Company (Gillette) has filed two different complaints asserting infringement of numerous design patents to protect several of its razor blade related products.  In the first case, Gillette recently obtained a consent judgment, illustrating the value of design patents in its patent portfolio.  The second case is ongoing.

First, on October 10, 2013, Gillette filed a complaint against BK Gifts, BK Razors, Brian Patrick, Kim Murry, and Zilo Store, Inc. (collectively, “Defendants”), in the Southern District of Ohio (Gillette Company v. BK Gifts, transferred to the Northern District of Ohio, Docket No. 3-13-cv-02241-1).

The suit related to the following six design patents, which Gillette asserted covered the “valuable, unique and distinctive ornamental distinctive and non-functional design” of their razors:

  • D415,315 (’315 patent), issued on October 12, 1999, claiming “the ornamental design for a razor cartridge,”
  • D422,751 (’751 patent), issued on April 11, 2000, claiming “the ornamental design for a razor blade cartridge,”
  • D430,023 (’023 patent), issued August 29, 2000, claiming “the ornamental design for a container,”
  • D440,874 (‘874 patent), issued April 24, 2001, claiming “the ornamental design for a container,”
  • D531,518 (’518 patent), issued on November 7, 2006, claiming “the ornamental design for a dispenser for razor cartridges,” and
  • D575,454 (’454 patent), issued on August 19, 2008, claiming “the ornamental design for a shaving blade unit.”

The ’315 patent is set to expire on October 12, 2013 and the ’751 and ’023 patent will expire in 2014.

Figure 1 of the ’751 patent, Figure 1 of the ’518 patent, and Figure 1 of the ’454 patent are shown below, respectively.

The Defendants allegedly copied these designs corresponding to Gillette’s Mach®, Fusion®, and/or Venus® razor blade cartridges, shaving blade units, dispensers, and shaving blade containers products.

Gillette stated that on August 12, 2013, it sent an e –mail to various e-mail addresses associated with BK Gifts, notifying BK entities of the infringement of Gillette’s’ intellectual property and design patent rights.  An alleged August 15, 2013, letter by Gillette further requested resolution of BK Gifts’ and BK Razors’ infringement of Gillette’s design patent and intellectual property rights, with copies of the ‘751 and ‘454 patents.  Gillette allegedly received no response to this letter.

Gillette stated that on July 21, 2013, it sent a letter to Zilo demanding that Zilo cease and desist from further infringement, including attachment of the ‘751 patent, ‘454 and 315 patents.  On August 7, 2013, Gillette allegedly received a response offering full cooperation, but the infringing products remained available for sale online.

In the complaint, Gillette claimed that an ordinary observer would be deceived by the substantial similarity between its patented designs and the products sold and/or offered for sale.  Accordingly, Gillette claimed that Defendants’ deliberate and willful actions in infringing the above-noted design patents caused and would continue to cause irreparable harm unless preliminarily and permanently enjoined.

A consent judgment dated January 22, 2014, noted that Gillette and the Defendants entered into Confidential Settlement Agreements, dated and effective as of January 15, 2014, resolving all disputes and claims between the parties, including past damages, costs and attorneys’ fees.

The ’751, ’454 and ’518 patents, referred to as “the Fusion and Mach Patents” were determined to be infringed, not invalid, and not unenforceable.  Injunctions were granted against the Defendants.

In the consent judgment, the Defendants admitted that “the Fusion and Mach Patents are valid and enforceable in all respects, and that the razor cartridges and cartridge containers sold by the BK Defendants as ‘comparable to’ Fusion or Mach razor cartridges, or otherwise advertised or sold by the BK Defendants as substitutes, alternatives, or replacements for Fusion of Mach razor cartridges and cartridge containers violated the applicable Fusion and Mach patents.”

The judgment further noted that the Defendants would “terminate all manufacture, offers for sale, sale, and use of its current razor cartridges and cartridge containers incorporating the designs protected by any and all of the Fusion and Mach patents, and are hereby permanently enjoined, in the absence of a license, from making, offering for sale, selling and using such products, and variations thereof, during the enforceable life of the Fusion and Mach Patents.”

Second, Gillette also filed a complaint on January 29, 2014, in the Southern District of Ohio (Docket No. 1:14-cv-89), against the Javitch Canfield Group (JCG) and PNL Ventures (PNL). Gillette alleged infringement of Gillette’s design patent rights, as protected by the D422,751 patent, seeking a preliminary and permanent injunction against continued infringement.  In the complaint, Gillette claimed that both JCG and PNL offered for sale on Amazon.com, and based a substantial component of their business on direct copies and near exact imitations of Gillette’s product as embodied in the design of the ’751 patent.

Gillette filed for injunctive relief and damages, individually and collectively for joint and several liability, and for willful infringement from both JCG and PNL.  Gillette further requested an assessment of Gillette’s damages and/or Defendant’s profits, an award of attorneys’ fees to Gillette. A trial by jury was demanded.  This case is ongoing.

Tuesday
Feb042014

IPO submits comments regarding Proposed Hague Rules

As previously reported, on November 29, 2013, 78 FR 71869 was published as a proposed rule to implement the Hague Agreement. 

On February 4, 2014, the Intellectual Property Owners Association (IPO) submitted comments on the proposed Hague rules.

In summary, the IPO comments are directed to:

  1. 37 CFR 1.53(d)(1)(ii) - continued prosecution application (CPA) practice in international design applications (IDAs); and
  2. the payment of fees for IDAs when filing through the USPTO (indirect filing).
Friday
Jan102014

Pacific Coast v. Malibu Boats

In 2011, Pacific Coast Marine Windshields Limited (Pacific Coast) brought suit (No. 12-CV-0033) against Malibu Boats, LLC (Malibu) in the Middle District of Florida, alleging infringement of U.S. Patent No. D555,070. The District Court held that Pacific Coast was barred from alleging infringement due to prosecution history estoppel, and Pacific Coast appealed. 

On January 8, 2014, the Federal Circuit held that “the principles of prosecution history estoppel apply to design patents” but reversed the district court’s summary judgment of non-infringement because “the accused infringing design was not within the scope of the subject matter surrendered during prosecution.”

A design patent application filed in 2006 by Darren Bach, CEO of Pacific Coast, depicted various embodiments of the claimed ornamental design for a marine windshield with configurations including zero, two, and four vent holes on a corner post.  In response to a restriction requirement, the applicant elected a group corresponding to a single figure with four vent holes, and canceled the remaining figures.  Mr. Bach later obtained a patent for a divisional of the originally filed application, claiming a windshield with no vent holes.  The application issued as D555,070.

Figure 1 of the ‘070 patent is reproduced below.

The accused infringing design of Malibu Boats is a boat windshield with three trapezoidal holes, as shown below.

The District Court granted Malibu Boats’ motion for summary judgment of non-infringement, finding that prosecution history estoppel barred the infringement claim.  The District Court’s decision recognized that the accused design had one fewer vent hole but explained that ‘“the accused design is still clearly within the territory [surrendered] between the original claim and amended claim.’”

On appeal, the Federal Circuit noted that the doctrine of prosecution history estoppel is well established for utility patents, but that the concept of prosecution history estoppel as applied to design patents was “one of first impression” for the court.  For utility patents, the doctrine of prosecution history estoppel prevents a patentee from recapturing in an infringement action subject matter which was surrendered during prosecution.

The Federal Circuit noted that “for design patents, the concepts of literal infringement and equivalents infringement are intertwined,” and stated that accordingly “the test for design patent infringement is not identity, but rather sufficient similarity.” Furthermore, the Federal Circuit acknowledged that Pacific Coast had “characterized the substantial similarity between the accused designs and the ‘070 patent as the basis for an infringement claim ‘under the doctrine of equivalents.’” The Federal Circuit concluded that “the principles of prosecution history estoppel apply to design patents as well as utility patents.”

The Federal Circuit then addressed the question of whether the prosecution history estoppel barred infringement in this case.

The Court determined that there was a surrender of claim scope during prosecution, and that “by removing broad claim language referring to alternate configurations and cancelling the individual figures showing the unelected embodiments, the applicant narrowed the scope of his original application, and surrendered subject matter.”

In addition, the Federal Circuit noted that the claim scope was surrendered to secure the patent, but not to avoid prior art.  Whereas Pacific Coast argued that only surrenders to avoid prior art were within the doctrine, the Federal Circuit cited Festo stating that “the rationale behind prosecution history estoppel ‘does not cease simply because the narrowing amendment, submitted to secure a patent, was for some purpose other than avoiding prior art.’”

With respect to the scope of the surrender, the District Court had determined  that the accused design was within the scope of the surrender, i.e., that by abandoning a design with two holes and obtaining patents on designs with four holes and no holes, the range between four and zero was abandoned.  In contrast, the Federal Circuit stated that “this range concept does not work in the context of design patents where ranges are not claimed, but rather individual designs.” The Federal Circuit further noted that “the applicant surrendered the claimed design with two holes on the windshield corner post, but neither submitted nor surrendered any three-hole design.”

Thus, the Federal Circuit held that the prosecution history estoppel principles apply to design patents, but do not bar Pacific Coast’s infringement claim, and remanded for further proceedings.

Wednesday
Jan082014

Design Patent Protection for Graphical User Interfaces (GUIs) Likely Available in China in 2014

From December 19th-20th, 2013, the U.S. and China conducted the 24th U.S.-China Joint Commission on Commerce and Trade (JCCT) in Beijing, China.  One notable outcome from the meetings was that China agreed to increase its efforts “to advance innovation in the fast growing information and communications technologies sector by publishing draft Guidelines for public comment to extend design-patent protection to graphical user interfaces.”

Presently, China does not afford design patent protection for Graphical User Interfaces (GUIs) or computer-generated icons.  However, on October 22, 2013, the State Intellectual Property Office of the People’s Republic of China (SIPO) released a draft amended version of the Examination Guidelines for public opinion.  Thus, it is likely that design patent protection for GUIs and computer-generated icons will finally be available in China in 2014.

Surprisingly, China’s patent system, probably now considered by most as a “major” patent system, has yet to provide design patent protection for GUIs and computer-generated icons.  Indeed, just more than a year ago, Taiwan began providing such design patent protection, while design patent protection for GUIs and computer-generated icons has been available in Japan and the U.S. for more than twenty years.

According to a recent paper by Mark D. Janis and Jason Du Mont, the U.S. Patent and Trademark Office (USPTO) has already issued several thousand design patents for so-called virtual designs, and recent filings for such applications account for more than “nearly any other type of design subject matter.” So with the likely advent of design patent protection for GUIs in China and the already significant representation of such protection (and sought-after protection) in the U.S. and other jurisdictions abroad, the importance of design patent protection for GUIs and computer-generated icons cannot be understated and will no doubt play an increasing role in a sophisticated company’s world-wide patent portfolio.