Entries in Federal Circuit (7)


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The Egyptian Goddess case of 2008 eliminated an outdated point-of-novelty test.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.


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.


In re Owens (CAFC March 26, 2013)

The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion in In re Owens, affirming the BPAI’s rejection of Owens et al.'s design patent application 29/253,172.  The opinion at p. 2 states that the "’172 application, which is the subject of this appeal, is a continuation of U.S. Design Patent Application No. 29/219,709 (filed Dec. 21, 2004) (“’709 application”). The ’709 application claimed a design for a bottle," with boundaries as shown, e.g., in Figure 2 (left): 

Owens filed the ’172 application in 2006, seeking the benefit of the ’709 application’s 2004 priority date under 35 U.S.C. § 120.  The ’172 application claimed certain design elements found on the top and side portions of the original bottle, as depicted in Figure 2 (above, center).

The Examiner rejected the '172 application under 35 USC 112, ¶ 1, for including new matter, as well as being obvious in view of Owens' earlier-sold bottles (obviousness hinged on whether the '172 application was entitled to the benefit of the '709 application's filing date).  The BPAI affirmed the Examiner's rejection, finding that "Owens had claimed previously undisclosed 'trapezoidal sections occupying part, but not all, of the surface area of the front and back panels.'" See Figure 2, above, right.

Owens argued that the BPAI applied an incorrect written description test to his case because the '172 application did not claim a trapezoidal-shaped area at all, "insist[ing] that in order to claim a new design element, one must first claim a new boundary." The trapezoidal-shaped area identified by the Examiner was bounded by a broken-line boundary, an "unclaimed boundary," and it is "understood that the claimed design extends to the boundary but does not include the boundary." MPEP § 1503.02.

The CAFC characterized Owens’ arguments as being “premised on the notion that an applicant who has possession of an entire area in a parent application must likewise possess all parts of the area.”  The CAFC found that these arguments misconstrue its holding in In re Daniels, stating that “[i]t does not follow from Daniels that an applicant, having been granted a claim to a particular design element, may proceed to subdivide that element in subsequent continuations however he pleases.”

On the contrary, the CAFC stated that “the question for written description purposes is whether a skilled artisan would recognize upon reading the parent’s disclosure that the trapezoidal top portion of the front panel might be claimed separately from the remainder of that area. [Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)]." According to the court, “Owens’s parent application discloses a design for a bottle with an undivided pentagonal center-front panel, whereas the continuation claims only the trapezoidal top portion of that center-front panel.” Because the parent application did not suggest anything uniquely patentable about the top portion of the bottle, the CAFC affirmed the Board's decision.

When asked "whether, and under what circumstances, Owens could introduce an unclaimed boundary line on his center-front panel and still receive the benefit of § 120," the CAFC stated:

"In our view, the best advice for future applicants was presented in the PTO’s brief, which argued that unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure. Although counsel for the PTO conceded at oral argument that he could not reconcile all past allowances under this standard, he maintained that all future applications will be evaluated according to it."

Note that MPEP § 1503.02 indicates "[w]here no boundary line is shown in a design application as originally filed, but it is clear from the design specification that the boundary of the claimed design is a straight broken line connecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s) to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter." However, this would not have aided Owens, as a straight broken line would only have defined a larger trapezoidal area, resulting in the same written description problems.


Federal Circuit Reverses Dismissal in Hall v. Bed Bath & Beyond, Inc.

The Federal Circuit reversed the district court’s sua sponte dismissal of a complaint filed by Mr. Robert J. Hall for patent infringement and other claims.  The Federal Circuit opinion can be found here.

Mr. Hall accused Bed Bath & Beyond of infringing U.S. Design Patent No. D596,439 entitled “Towel Tote.” Fig. 1 from D596,439 is reproduced below.

Mr. Hall’s complaint identified the patent, showed the patented design, and described the accused towel.  However, the district court took the position that the complaint should have included answers to question such as: “what is it about Plaintiff’s towel that he claims is ‘new, original and ornamental,’ meriting the protection of a design patent?” Opinion at 5.  The district court dismissed the complaint for failure to state a claim on which relief can be granted.

In vacating the district court’s dismissal, the Federal Circuit noted that there are five necessary elements of a patent infringement pleading.  These required elements include:  (i) alleging ownership of the patent, (ii) naming each defendant, (iii) citing the patent that is allegedly infringed, (iv) stating the means by which the defendant allegedly infringes, and (v) pointing to the sections of the patent law invoked.  Opinion at 4.  The Federal Circuit pointed out that Mr. Hall presented a lengthy complaint and plausibly satisfied each of these requirements.  Opinion at 6-8. 

The Federal Circuit found that the district court erred in requiring that the complaint identify the “new, original, and ornamental” aspects of the claimed design, and pointed out that in Egyptian Goddess the Federal Circuit eliminated the “point of novelty” step when determining infringement of a design patent.  Opinion at 7.  Further, the Federal Circuit stated that “claim construction is not an essential element of a patent infringement complaint.” Opinion at 5.

Judge Lourie wrote a dissenting opinion.  Despite pointing out flaws in the district court’s analysis, Judge Lourie’s dissent took the position that the district court’s analysis was not sufficiently faulty to justify vacation of its dismissal and that the plaintiff should have accepted the court’s invitation to replead its patent count.  Dissent at 3. 


Patentability of Bank of America Corp.’s Design Patent Affirmed

As reported in Oblon Spivak’s Patents Post-Grant blog, the U.S. Court of Appeals for the Federal Circuit affirmed the patentability of Bank of America Corp.’s design patent for a miniature credit card, agreeing that a patent examiner erred in initially rejecting the patent claim as obvious.  The decision was made without explanation. 

A discussion of the inter partes reexamination that led to the Federal Circuit appeal can be found here.