Entries in design patents (85)


Oakley - US D523,461

Over the past few years Oakley Inc. (“Oakley”) has relied heavily on design patents to protect its product line.  Most recently, Oakley filed a complaint for patent infringement against Thermor Ltd. (Thermor), Fry’s Electronics, Inc. (Fry), Best Buy Co. Inc. (Best Buy), Tool King LLC. d/b/a/ Toolking.com (Toolking), Laptop Travel, LLC., and Beach Trading Co., Inc. d/b/a/ Buydig.com (Buydig), (collectively “Defendants”) on February 14, 2014, in the Southern District of California (14CV0349-GPC-DHB).

In the complaint, Oakley asserted that the Defendants manufactured, used, sold, offered for sale and/or imported into the United States, eyewear allegedly infringing Oakley’s Design Patent No. D523,461 (’461 patent), directed to an Eyeglass Component.  As discussed further below, Oakley has asserted the ‘461 patent on numerous occasions in the past.

Oakley previously sued Hire Order, Ltd. on June 2012, (3:12-cv-02346-DMS-WMC) over its ‘461 patent, demanding that Hire cease the sales of its Sportsman Eyewear video recording system.

In this case, Oakley claims Thermor was “knowingly, intentionally and willfully directly infring[ing], engag[ing] in acts of contributory infringement, and /or induc[ing] the infringement of the D461 patent by directly and/or directly making, using, selling, offering for sale and/or importing eyewear covered by the D461 patent.” Oakley listed Thermor’s BIOS Eyewear Cam as an allegedly infringing product.

Oakley made similar statements regarding Fry, and Fry’s BIOS Eyewear Cam, Best Buy and Best Buy’s Thermor – BIOS Eyewear Cam, Laptop Travel and their BIOS Eyewear Action Cam, as well as Toolking and Buydig for their Thermor 604FC BIOS Eyeware Action Camera.

Reproduced below is Figure 1 of the D461 patent, and a representation of the Thermor 604FC BIOS Eyeware Action Camera as listed on the Buydig.com website.

In the complaint, Oakley noted that the Defendant’s alleged acts of infringement were undertaken without license from Oakley, that Defendants had “actual and/or constructive knowledge of the D461 patent … [and] infringed the D461 Patent with reckless disregard of Oakley’s patent rights.” Oakley further argued that “Defendants knew, or it was so obvious that Defendants should have known” that their actions constituted infringement.

Oakley requested a preliminary and permanent injunction, damages allegedly suffered by Oakley and/or Defendants’ total profit from the alleged infringement, with treble damages. Oakley further requested an award of attorney fees, and pre-judgment and post-judgment costs. A jury by trial was demanded.

This case is ongoing.

The ’461 patent was also asserted by Oakley in the cases listed below, several of which are ongoing.

Case Number

Date Filed

Date Terminated







Dismissed without Prejudice

Central District of California (Southern Division – Santa Ana)





Default Judgment

Southern District of California (San Diego)





Dismissed with Prejudice

Southern District of California (San Diego)





Voluntary Dismissal by Plaintiff

Eastern Distirct of Pennsylvania (Allentown)

Oakley as Defendant




Dismissed in deference to parallel action

Northern District of Iowa (Cedar Rapids)

Oakley as Defendant




Default Judgment

Central District of California (Western Division – Los Angeles)





Dismissed with Prejudice

Central District of California (Southern Division – Santa Ana)






Southern District of California (San Diego)






Southern District of California (San Diego)






Southern District of California (San Diego)



PTAB: Munchkin v. Luv N'Care - Final Decision in IPR

On April 21, 2014 the USPTO’s Patent Trial and Appeal Board issued a final written decision in Munchkin Inc. et al. v. Luv N’ Care Ltd. (IPR2013-00072), the inter partes review of Luv N’ Care Ltd.’s design patent for a baby drinking cup.

The PTAB found Luv N’ Care Ltd.’s D 617,465 patent (the ’465 patent) unpatentable. This is the first time that the USPTO has invalidated a design patent under a post-grant review process created by the America Invents Act.

The ‘465 patent claims a drinking cup. Figures 2 and 3 are reproduced below.

In January 2012, Luv N’ Care filed an infringement suit for the ’465 patent in the Southern District of New York, against Toys R Us and Munchkin (NYSD-2-12-cv-00228).

In the complaint, Luv N’ Care stated that it had “generated hundreds of millions of dollars in revenue from the sale of goods under their trademarks and trade dress,” and that a series of competitors had allegedly “all deliberately copied [Luv N’ Care’s] designs, to illegally profit from them.”

Luv N’ Care sued the Defendants on counts of alleged infringement, trade dress infringement and unfair competition, federal trademark dilution, unfair competition under New York law, violation of New York general business law, and contributory infringement.

The ‘465 patent was also involved in the Luv N’ Care Ltd v. Regent Baby Products Corp, 10-9492 (S.D.N.Y filed Dec. 21, 2010), and Luv N’ Care Ltd v. Royal King Infant Prod’s Co. Ltd, 10-cv-00461 (E.D. Tex. Filed Nov. 4, 2010). Luv N’ Care settled with Royal King Infant Prod’s Co. Ltd, with Royal King agreeing to cease and desist from manufacture and sales of products likely to cause confusion.

In December 2012, Toys R Us and Munchkin (‘the Petitioners’) filed a petition for inter partes review, alleging that the ’465 patent was obvious in view of two references, US 2007/0221604 (the ’604 reference) and US 6,994,225 (the ’225 reference). This was the first inter partes review initiated by the USPTO for a design patent. 

The Patent and Trials Appeal Board (PTAB) determined that there was reasonable likelihood that the claim of the ‘465 patent would have been obvious over each of the ‘225 and ‘604 reference, and granted the petition for review.

First, Luv N’ Care argued that its ‘465 patent was entitled to an earlier effective filing date of US Application No. 10/536,106 (the ‘106 application), thereby disqualifying the ‘225 and ‘604 references. In response, the Petitioners argued that the ‘106 application lacked written description support for the ‘465 patent, based on differences in the spout.

Figures from both the ‘465 patent and the ‘106 application are shown below, as reproduced from the PTAB’s final written decision:

In its written decision, the PTAB stated the following differences “(1) the outer boundary of the spout tip of the claimed design is larger than that of the ‘106 application. … (2) the spout tip of the claimed design has a different, more rounded, oval shape than that of the racetrack shape of the spout tip in the ‘106 application; and (3) the spout tip of the claimed design has three concentric rings that the ‘106 application does not disclose.”

The PTAB further noted that although the ‘106 application stated that an oval or other shape may be used for the spout, the ‘106 application did not “identify the specific shape of the spout in the claimed design, or otherwise reasonably convey to those skilled in the art that the inventor had possession of the claimed design.” Accordingly the PTAB concluded that the ‘465 patent was not entitled to the filing date of the ‘106 application. The written decision notes that counsel for Luv N’ Care conceded that the claim was not patentable if denied the benefit of the filing date.

Second, Luv N’ Care submitted a motion to amend the patent. As reiterated by the PTAB, a motion to amend the patent must be responsive to a ground of unpatentability at issue in the trial, and it may not enlarge the scope of the claims, or introduce new matter. The patent owner bears the burden to establish that it is entitled to the relief requested by its motion to amend.

The amendment proposed by Luv N’ Care is shown in part below for Figure 3:

The PTAB stated that the “spout tip (left of center in each drawing above) is egg-shaped in the issued claim, whereas it is racetrack-shaped in the proposed amended claim. Additionally, the spout tip of the issued claim includes three concentric rings, whereas that of the proposed amended claim includes only two concentric rings.”

In its written decision, the PTAB stated that Luv N’ Care effectively argued that the proposed amended claim “is not broader than the issued claim because to ‘an ordinary observer,’ the designs are ‘substantially the same.’” However, the PTAB stated that it was not “aware of any authority that has applied the ‘ordinary observer’ test … to compare the scope of two claims.” The PTAB further noted that “the proposed amended claim is broader than the issued claim because it is broader with respect to racetrack-shaped spout tips and raised rim vents, even though it may be narrower with respect to egg-shaped spout tips and vents without raised rims.”

The PTAB held that the Petitioners had “shown by a preponderance of evidence that the sole claim of the ‘465 patent is unpatentable, and [Luv N’ Care] has not met its burden of proof on the motion to amend.”


MRC Innovations v. Hunter – A Decision with Bite for Design Patent Owners?

In MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 2013-1433 (Fed. Cir., Apr. 2, 2014), the Federal Circuit addressed the obviousness of patents covering ornamental designs for dog jerseys.  In doing so, the analysis raises questions about whether the Federal Circuit has fully moved beyond the at times dismissive approach to design patents that has characterized some of its decisions in years past.

The Decision

MRC Innovations, Inc. (MRC) owns two design patents, D634,488 (“the ‘488 patent”) and D634,487 (“the ’487 patent”) for an ornamental design for a football and baseball jersey for a dog, respectively.

Figures from the ‘488 patent are reproduced below:

Figures from the ’487 patent are reproduced below:

MRC appealed the grant of a summary judgment of obviousness of both patents  issued by Judge Gaughan from the Northern District of Ohio.  The district court specifically found the ‘488 patent invalid over a prior art jersey referred to as the V2 and an Eagles jersey.  Reproduced below are images of the V2 jersey and Eagles jersey, respectively, as shown in the Federal Circuit’s opinion.  Slip Op. at 4.

The Federal Circuit further agreed that the secondary references identified by the District Court (the V2 jersey and another reference known as the “Sporty K9”) were “‘so related’ to the Eagles jersey that the striking similarity in appearance across all three jerseys would have motivated a skilled designer to combine features from one with features of another.”

Finally, the Federal Circuit stated that MRC “had not established a nexus between the secondary considerations and the claimed design that was sufficient to overcome the other evidence of obviousness.”

A similar analysis was performed for the ’487 patent which again resulted in the Federal Circuit affirming the district court’s decision that the ‘487 patent was obvious in view of the prior art.  A side by side comparison of the ’487 patent and the Sporty K9 baseball jersey which was used as the primary reference is reproduced below from Appellant’s Opening brief (p. 35).


Setting aside the ultimate conclusion of obviousness at the summary judgment stage, several statements in the opinion are troubling.  The first lies with two gratuitous, though often repeated, statements from earlier design patent opinions.  These statements have rankled design patent owners in the past, but are apparently alive and well.  The second concern lies with the Federal Circuit’s discussion of features found to constitute similarities between the ‘488 patent design and the prior art.

The first gratuitous statement relates to the scope of design patents generally.  Specifically, in 1988 the Court in In re Mann stated that design patents have “almost no scope.”  Slip op. at 9, fn. 1, citing 861 F.2d 1581, 1582 (Fed. Cir. 1988).  While the MRC decision goes on to point out that differences in visual appearance have been permitted in an infringement analysis, citing to the Crocs case from 2010, the question is why the Court felt the need to reference In re Mann at all.  More fundamentally, the statement in In re Mann cannot withstand scrutiny when considered in light of the U.S. Supreme Court’s bedrock decision in Gorham v. White, the statute (35 USC § 289), and the Federal Circuit’s en banc decision in Egyptian Goddess.

In Gorham, the Supreme Court found infringement of spoons that differed in numerous respects from the claimed design.  In doing so, the Supreme Court did not say that design patents have almost no scope.   Instead, the Supreme Court took quite the opposite approach and criticized the lower court for using too exacting of a standard for comparing the accused products to the patented design.  The Supreme Court held that “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”  81 U.S. 511, 528 (1872).

The In re Mann statement is also out of tune with the Federal Circuit’s statement in Pacific Coast Marine Windshields v. Malibu Boats.  739 F.3d 694 (Fed. Cir. 2014).   In Malibu Boats the Court pointed out that an infringement analysis of a design patent effectively involves both literal infringement and infringement by equivalents due to language of 35 U.S.C. § 289.   It stated:

For design patents, the concepts of literal infringement and equivalents infringement are intertwined. Unlike the provisions defining infringement of a utility patent, the statutory provision on design patent infringement does not require literal identity, imposing liability on anyone who “without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied . . . .” 35 U.S.C. § 289 (emphases added).

(739 F.3d at 701, emphasis in original)

As Malibu Boats points out, the statutory test for infringement does not require identity, but merely any colorable imitation of the design.  Nothing in the statute that suggests that design patents have almost no scope.

One can further ask if the In re Mann statement has any relevance after the Federal Circuit’s en banc decision in Egyptian Goddess.  There the Court held that where two designs are not plainly dissimilar, it is appropriate to consider the prior art when determining infringement.  Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed Cir. 2008) (en banc).  The logic in Egyptian Goddess necessarily means that the scope of a design patent may vary depending on the prior art.  Where there are no similar designs in the prior art, a design patent owner should expect greater scope for his patent.  On the other hand, in a crowded art, the scope of a design patent may be narrower.  The blanket statement from In re Mann that patents have “almost no scope” is thus flatly inconsistent with Egyptian Goddess, for example, in instances where the prior art is far removed from a patented design.  When considered in light of Gorham, 35 U.S.C. § 289, and Egyptian Goddess, design patent owners would be better served if the Federal Circuit disavowed the In re Mann statement entirely.  Doing so would avoid confusion in the district courts and inappropriate grants of summary judgment of non-infringement.

The second gratuitous statement springs from In re Rosen’s discussion of obviousness in 1982.  There the CCPA stated that in comparing a potential primary reference to a patented design, the “trial court judge may determine almost instinctively whether the two designs create basically the same visual impression.”  673 F.2d 388, 391 (CCPA 1982); Slip op. at 6.  This statement is also fraught with danger for design patent owners.  Obviousness must be viewed from the perspective of an ordinary designer.  Is it truly appropriate to expect a district court judge to look at two different designs with the same scrutiny as an ordinary designer based only on the judge’s personal experience?  In any event, while the CCPA qualified its observation by stating that the district court judge must also communicate the reasoning behind its decision, the effect of this statement can be equally detrimental to design patent owners.  The obvious danger is that district courts may feel free to substitute their own views for that of the fact finder, even where reasonable minds may differ, and too readily grant summary judgment.

The combination of In re Mann’s statement that design patents have almost no scope and In re Rosen’s statement that judges can instinctively find patents obvious makes design patents highly vulnerable.  Both statements should be retired from the Federal Circuit’s jurisprudence.

The next cause for concern in MRC requires an examination of the Court’s reasoning in applying the prior art to the ‘488 patent.  To its credit, the Court’s discussion attempts to identify specific design features shared between the prior art jerseys and the patented design.  But consider the five features identified, especially those identified as “key” design similarities (emphasis and interpolation supplied):

First, the district court pointed out three key similarities between the claimed design and the Eagles jersey: [1] an opening at the collar portion for the head, [2] two openings and sleeves stitched to the body of the jersey for limbs, and [3] a body portion on which a football logo is applied.  MRC, 921 F. Supp. 2d at 809. If the district court’s analysis had ended there, it might indeed have failed to meet the High Point verbal description requirement. However, the district court went on to point out two additional similarities between the two designs: first, the Eagles jersey is made “primarily of a mesh and interlock fabric”; and second, it contains at least some ornamental surge stitching—both features found in the ’488 claimed design. Id. The district court also went on to acknowledge the three major differences between the two designs that are enumerated above. See id. Taking all of those things together (the at least five design characteristics that the claimed design shares with the Eagles jersey and three design characteristics that differ from it), the district court painted a clear picture of the claimed design.

(Slip. Op. at 8)

The three “key similarities” are (1) an opening at the collar portion for the head, (2) two openings and sleeves stitched to the body portion, and (3) a body portion with a logo.  Each of these features is highly generic and applicable to any sports jersey.  In addition, most of these features appear to be dictated by function (e.g., openings for heads and arms, sleeves, body portion) rather than design features.  Thus, each of the three “key similarities” do not advance the discussion of comparing the design of the prior art and the ‘488 patent.

Despite characterizing these as key features, the Federal Circuit acknowledged that if the district court had mentioned only these features it would have failed to characterize the visual impression of the patented design with sufficient specificity.  The decision thus discussed two further features found to be similar in the prior art and the ‘488 patent.  Remarkably, however, the opinion then went back and again relied on the three discredited generic features by concluding that five features (including the three “key” features) supported similarity between the Eagle jersey and the patented design.  This logic is deeply disturbing and should make any design patent owner nervous.  The decision even seems to imply that the number of features shared by the prior art and the patented design (five similar as opposed to three different) matters, adding further sting to the Court’s reliance on three features applicable to almost any sports jersey.

Where future Federal Circuit decisions addressing summary judgment of obviousness and infringement of design patents will go from here is difficult to say.  Unfortunately, the approach in MRC strongly suggests that the bar remains high for design patent owners.  Surviving summary judgment and reaching trial before a jury in a design patent case may remain the rare exception for some time to come.

Anne-Raphaëlle Aubry and Andrew M. Ollis collaborated on this post.


Design Day 2014

Celia Murphy, Supervisory Patent Examiner for technology Center 2900 (‘TC 2900’) was the host for Design Day 2014, the 8th Annual Design Day.  Design Day 2014 appeared to have a significant increase in participants as the USPTO Madison Auditorium had only a few empty seats throughout the day.

Andy Faile, Deputy Commission for Patent Operations started the day off by highlighting two initiatives by the USPTO: interview practice, and a technical training program. Mr. Faile noted that a growing number of interviews were being conducted, benefiting examiners and practitioners alike, and that the number of requests for WebEx interviews was also increasing.

Regarding the technical training program, Mr. Faile invited interested outside parties to come to the USPTO to provide instructions for Examiners on the state of the art. Finally, Mr. Faile commented on the increase in annual design filings, which have roughly tripled between 1992 and 2013.

Following the welcoming remarks, Robert Olszewski, Director of Technology Center 2900 reported on the State of the Design Technology Center. Mr. Olszewski indicated that while TC 2900 is still the smallest technology center, it is expanding. TC 2900 currently employs 120 Patent Examiners, a number which is expected to grow to 150 by the end of 2014. This is part of an effort to catch up with a backlog which has led 1st Office Action pendency to increase from 8.5 months in 2010 to 10.7 months in 2013.

As on Design Day 2013, David R. Gerk, Patent Attorney at the USPTO Office of Policy and International Affairs, reported on the implementation of the Hague agreement. Mr. Gerk first provided a brief overview of the Hague system, which provides for the centralized acquisition and maintenance of industrial designs.

Mr. Gerk noted that the Republic of Korea will become a member of the Hague agreement on July 1st 2014, and that China, Japan, Russia and Canada are actively pursuing membership. Mr. Gerk then proceeded to debunk some Hague agreement ‘myths.’ In particular, he noted that the United States is not currently a member, and will become one no sooner than 3 months from the date the U.S. deposits its instrument of ratification with WIPO.

With respect to drawings, Mr. Gerk indicated that drawings will indeed be reviewed by WIPO and by the local offices.  Therefore, Applicants will still need to comply with U.S. drawing requirements should they wish to pursue a U.S. Design Patent.

Finally, Mr. Gerk noted that 100 designs, described by 100 or more drawings, may be filed in a single Hague application, and the International Bureau may issue a single international registration. However, if the United States is designated as a contracting party, the USPTO will issue a restriction requirement where appropriate.

Following a break, Jihoon Kim, Deputy Director of the Design Examination Policy Division for the Korean Intellectual Property Office (KIPO) gave an informative presentation on recent changes in GUI design applications at KIPO, which we previously discussed in more detail.

Joel Sincavage, Design Practice Specialist of TC 2900, presented a summary of the USPTO roundtable on the written description requirement for design patent applications and updated the audience as to the USPTO's progress with implementing policies and procedures.  We previously commented on the USPTO's request for comments, the roundtable, and the IPO and AIPLA submitted comments.

Mr. Sincavage prompted controversy at Design Day 2013 with respect to the written description requirement and this controversy still continues.  However, Mr. Sincavage did indicate that the proposed factors that were the subject of the roundtable will not be further pursued.

Instead, Mr. Sincavage indicated the USPTO would adopt policies that were consistent with Federal Circuit decisions; that it was not practical to include a written explanation in design patent applications; and that the USPTO will provide clear examples for the public and examiners.  Although not specified during Design Day 2014, subsequent discussions with Mr. Sincavage and USPTO personnel indicated the USPTO would publicly propose rules/examples for review and comment prior to issuing final guidance.

The last presentation before the lunch break covered design patents in post-grant proceedings. Elizabeth Farrill of Finnegan LLP moderated a discussion with Administrative Patent Judges Trenton Ward and Jennifer Bisk, and Damon Neagle of Design IP.  Judge Ward provided an overview of post-grant proceedings, identifying the 8 design IPRs filed thus far, and the 4 instituted.  The IPR cases numbers are IPR2013-00072 (Final Decision on April 21, 2014 - not patentable), IPR2013-00259 (not instituted), IPR2013-00500 (instituted), IPR2013-00501 (instituted), IPR2013-00580 (instituted), IPR2014-00071 (not instituted), IPR2014-00542 (pending), and IPR2014-00555 (pending). The cases can be accessed at the USPTO PTAB website.

Damon Nagel provided a brief explanation of his IPR (IPR2013-00259 - ATAS v. Centria), and commented on the application of a Rosen reference.  Specifically, Mr. Nagel was concerned that an experienced examiner may apply a very strict Rosen-based test in relying on a primary reference, where a court (e.g., a District Court) may apply a lower standard of review.  Mr. Nagel also discussed some of the apparent deficiencies in his IPR, which was not instituted, including the decision to not utilize an expert due to budget concerns.

Judge Ward reminded petitioners to provide a detailed analysis for a limited number of challenges, rather than identify many challenges, and support conclusions with sound, complete legal analysis, with pinpoint citations to evidentiary support.  Judge Bisk reminded petitioners they don't get much of a chance to do anything after the IPR is initiated, and stated Petitioner merely gets to respond to a Patent Office response - the petition is the entire case - use the best arguments and the best evidence.

Ms. Farrill suggested using color in the petition, as the APJs can see the color when filed, and Mr. Nagel suggested the use of an expert, with caution from APJs Ward and Bisk that expert opinions should be used on factual issues and should not echo attorney arguments.

Michael Jacobs began the post-lunch portion of Design Day 2014 with a presentation on litigating design patent cases.  Mr. Jacobs brought the perspective of someone who was relatively unfamiliar with design patent litigation prior to severing as co-lead counsel in a high-profile smartphone case that included design patents.  Mr. Jacobs highlighted some of the seemingly contradictory instructions judges have been given regarding verbally construing a design patent claim as well as the difficultly jurors face in having to view the evidence from the perspective of an ordinary designer for some arguments and as an ordinary observer for others.

Charles Mauro of Mauro New Media and Elizabeth Ferrill of Finnegan LLP gave the next presentation, which focused on new cutting edge technology and the significant protection issues that are being raised.  Mr. Mauro began with a discussion of cutting edge technology, including personal communication devices, personal robots, and self-driving cars, that was only found is science fiction in the not too distant past.  Ms. Ferrill then stepped through some difficulties raised by trying to protect this new technology with design patents.  Mr. Mauro concluded this presentation with a discussion of what he believes will be the next evolution of cutting edge technology.

Martha Moore, Rachael Brown, and Katie Maksym provided an exciting and passionate discussion on how they "Just Do It" at Nike.  The presentation included a background of Nike's business by Ms. Maksym and some of Nike's history, development, and involvement in sports and athletes by Ms. Moore, highlighting Nike's design achievements together with a few failures.  Ms. Brown provided an overview of how Nike captures design IP, including coordinating IP procurements services in Trademark, Patents, and Copyrights.  Erik Maurer of Banner & Witcoff, Ltd. described some of the enforcement actions he has been involved with in representing Nike, including cease and design letters, lawsuits, seizure by U.S. Marshalls, and dealing with repeat offenders.

Margaret Polson of Oppedahl Patent Law Firm LLC provided a case law update concerning designs.  Many of the cases discussed by Ms. Polson have been previously discussed here, including In re Owens, Keurig v. Rogers, Pacific Coast v. Malibu Boats, High Point v. Buyers Direct, and also mentioned the above-noted design IPRs.  Ms. Polson also discussed several other cases, including Z Produx v. Make-up Art Cosmetics, Ethicon v. Covidien, McIntire v. Sunrise Specialty, Sofpool v. Kmart, and MRC Innovations v. Hunter.

Our entire team contributed to the content of this post and attended various portions of Design Day 2014.


Coming out of the dark ages

About 12 years ago, in 2002, I co-authored an article entitled “U.S. Design Patents: an underdog that bites.” The article announced a coming-out stage for design patents:

Companies often seek broad protection for their products and technology, along with strong enforcement provisions, preferably available at a relatively low cost and via a relatively fast procedure. In the past, however, companies have often overlooked a tool that can provide such protection: the US design patent. Instead, companies have focused on trade dress protection and utility patents. In many companies, the trade mark department considered design patents to add little to trade dress protection, while the patent department considered them an inadequate tool to protect their functional inventions. As a result, design patents often fell through the cracks.

Today, however, companies are starting to realize that design patents can provide valuable protection, not only for products traditionally protected by trade dress, but also for inventions traditionally protected by utility patents ... .

Since then, the number of design patent applications filed has continued to grow steadily, with a short lull following the 2008 economic downturn.  More importantly, the number of design patents asserted in litigation has increased, leading to a surge in decisions from district courts, the CAFC and the ITC.  This recent case law has helped modernize design patent jurisprudence to some degree. 

The Egyptian Goddess case of 2008 eliminated an outdated point-of-novelty test.  The Crocs ITC cases showed that design patents could be powerful weapons against importations of infringing goods.  The on-going Apple v. Samsung case provided a real and modern-world example highlighting the unique advantage of design patent law which provides for damages based on an infringer’s profit.  Earlier this year, the CAFC confirmed in Pacific Coast Marine Windshields v. Malibu Boats that the same principles of public notice underlying prosecution history estoppel apply to design patents as well as utility patents.  These decisions and others probably would have pleased the late Judge Rich, who was often supportive, respectful and careful in his decisions related to design patents.

However, much is still needed in order to fully modernize the law of ornamental designs.  As judge Rich lamented in 1981, “the concept of unobviousness is not well suited to ornamental designs” and “[i]t is time to pass [a legislation] and get the impossible issue of obviousness in design patentability cases off the backs of the courts and the Patent and Trademark Office.” In re Nalbandian (CCPA 1981).  Congress has not followed that advice.  As a result, courts still struggle with evaluating non-obviousness for ornamental designs.

Another area that needs clarification is the application of the written description requirement to design patents.  The recent USPTO proposal and the opposing comments filed by the bar illustrate the challenge.

Another blatant area of confusion is claim interpretation.  Should a court verbalize or merely visualize claim construction?  Should a claim to a design be construed differently depending on whether the court is addressing invalidity or infringement?  What is the role of functionality in claim construction?  Should the 2010 case Richardson v. Stanley Works be followed or distinguished?  Functionality itself, as an invalidity ground, i.e., lack of ornamentality, could use a dust off.  Too many important markets are at stake, including those for replacement parts.

But perhaps the most significant change that is needed, in order for design patent law to mature, is a change in mentality.  Too many decisions result from courts’ “judicial hunches,” as Judge Rich called them.  Some courts still disrespect design patents, and summarily judge based on their personal views, without much reliance on the evidence of record, that the claimed designs are either not novel, obvious, or not infringed.  Perhaps the simple nature of the claimed subject matter (a bottle, a phone, a shoe, etc.) induces some judges to skip the record, ignore experts, short-circuit the fact finders, grant summary judgments by paying only lip-service to the established legal tests, and quickly get a case off their busy docket.