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.

Apple v. Samsung: Injunction Denied and No Juror Misconduct

As we previously reported, Apple moved for an injunction to enjoin Samsung from infringing, contributing to the infringement, or inducing infringement of Apple’s U.S. Design Patent Nos. 604,305 and 618,677.  The federal judge in the case, Judge Lucy Koh, however, denied Apple’s request for permanent injunction, allowing Samsung to continue selling products found to infringe Apple’s patents.

In a recent order, Judge Koh denied the request for permanent injunction, finding, inter alia, that Apple did not prove the causal nexus between infringement of its patents and irreparable harm alleged to have been suffered.  That is, Apple did not show its lost sales were because Samsung infringed Apple’s patents.

According to FOSS Patents, Apple will undoubtedly appeal the decision denying permanent injunction to the Federal Circuit.

On the same day as denying Apple’s permanent injunction request, Judge Koh also issued an order denying Samsung’s motion for a new trial based on a juror misconduct claim.  In their claim, Samsung moved for a new trial on the basis that the jury foreperson gave dishonest answers during voir dire and was actually biased against Samsung.  The judge denied the claim because evidence concerning the standards applied during jury deliberation is barred by Federal Rule of Evidence 606(b).

Update on Friday, December 21, 2012 at 12:41PM by Marc Albert Robinson

On Thursday, December 20, 2012, as expected, Apple gave notice of appeal of Judge Koh's order denying the request for a permanent injunction.

As reported by USA Today, the notice indicates that Apple would be appealing the order along with "all other orders, rulings, findings, and conclusions underlying and related to that order."

Patent Law Treaties Implementation Act of 2012

S. 3486 (the "Act") has passed the House and the Senate, and awaits signature by the President.  

The summary of this Act reads, with emphasis added:

Amends federal patent law to implement the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Treaty) and the Patent Law Treaty. (Both treaties were ratified by the Senate on December 7, 2007.) Standardizes application procedures to be consistent with other member countries.

Of note:

1) The Act will amend 35 USC 173 to change the term of a design patent from 14 years to 15 years from the date of issuance.

2) The Act will add 35 USC 381-390, of which 390 provides for the publication of the international design application, and will amend 35 USC 154(d) to expand Provisional Rights to a published international design application.

3) Under the Hague Agreement and the Geneva Act, WIPO states the "international application may include up to 100 different designs.  All designs must, however, belong to the same class of the International Classification of Industrial Designs (the Locarno Classification)." Although not specifically set forth in the Act, it is expected that International Design Applications filed under this Act will also be able to be filed with up to 100 different designs belonging to the same Locarno Classification.

Update on Thursday, December 20, 2012 at 4:30PM by Marc Albert Robinson

The "Patent Law Treaties Implementation Act of 2012" was signed by President Obama on December 18, 2012.  The formal title of the law is the "Hague Agreement Concerning International Registration of Industrial Designs."

Apple V. Samsung: CAFC Appeal Decision

In December, 2011, Apple appealed Judge Lucy Koh's denial of a preliminary injunction in the pending lawsuit in the U.S. District Court for the Northern District of California with respect to four Apple patents:

D618,677, which is alleged to be infringed by Samsung's Infuse 4G and Galaxy S 4G smartphones;

D593,087, which is alleged to be infringed by Samsung's Infuse 4G and Galaxy S 4G smartphones;

D504,889, which is alleged to be infringed by Samsung's Galaxy Tab 10.1; and

7,469,381, which is alleged to be infringed by all four products (the three mentioned above and the Droid Charge).

The CAFC ruled on the appeal from the denial of a preliminary injunction on May 14, 2012, providing a mixed bag of results for Apple and Samsung.  This ruling follows oral arguments that took place on April 6, 2012.

As recited in the CAFC ruling on p. 15, “[a] plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest,” citing to Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008).  Also, as stated on pp. 15-16 of the CAFC ruling, "[t]he decision to grant or deny a preliminary injunction lies within the sound discretion of the district court, and we will not reverse its judgment absent an abuse of that discretion," citing to Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009).

In summary, the CAFC acknowledges the heavy burden on Apple to make the case to convince the district court to grant a preliminary injunction, and the even heavier burden with respect to reversing the district court's decision.

The district court relied on varying rationales for denying a preliminary injunction.  However, a general theme in the opinion was Apple's failure to show irreparable harm (irreparable injury).  In particular, the CAFC affirmed (at least in part) the district court's denial of an injunction based on irreparable harm with respect to the D'667, D'087 and '381 patents. 

However, the CAFC rejected the district court's ruling that D'087 is likely anticipated by JP 1241638 (JP '638).  Specifically, the opinion at p. 22 states, "[w]hen the claimed portion of the side view is taken into account, the differences between the arched, convex front of the ’638 reference distinguish it from the perfectly flat front face of the D’087 patent," providing the following comparison image on p. 23:

Concerning D'889, the district court concluded the irreparable harm requirement had been satisfied, but denied injunctive relief because Apple had failed to establish a likelihood of success on the merits.  The CAFC disagreed with the district court, stating on p. 28 of the ruling that the relied on reference "Fidler" provided "a very different impression from the 'unframed' D'889 design." The following image was provided on p. 28 of the ruling.

Regarding the status of a preliminary injunction based on D'889, a determination as to the balance of hardships and the public interest was remanded to the district court.

There are several important items to take away from the CAFC ruling:

First: The CAFC ruling at pp. 16-17 states: "the district court was correct to require a showing of some causal nexus between Samsung’s infringement and the alleged harm to Apple as part of the showing of irreparable harm." In the context of design patents, where only a portion of a product may be claimed, a nexus may be more difficult to show because consumer demand may be less likely driven by that particular claimed portion of the design, than by the overall design of the product.  Nonetheless, Apple was still able to show the required nexus with respect to the alleged infringement of D'889.

Second: With respect to D'889, the district court may rule in favor of Apple and still grant a preliminary injunction with respect to D'889.  However, this may quickly become a moot issue because Samsung is rolling out the Galaxy Tab 2 10.1, which has a different bezel than the Galaxy Tab 10.1, and appears to be poised as a replacement in the marketplace.

Third: Apple's position concerning patent validity and infringement, at least concerning D'087 and D'889, is stronger.

Fourth: Irreparable harm is a requirement for a preliminary injunction - not for calculating damages and not a clear requirement for an exclusion order from the ITC (see Dennis Crouch's post on this issue at PatentlyO).  Therefore, the lack of irreparable harm (or at least a showing thereof) does not indicate Apple has a weak position for obtaining significant damages or an exclusion order.