Entries in ITC (12)


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The Egyptian Goddess case of 2008 eliminated an outdated point-of-novelty test.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


ITC: Toyo - Investigation Instituted

Further to our prior post on Toyo's ITC filing, according to a news release of September 16, 2013, the ITC voted to investigate Toyo's claims and will set a target date for completing the investigation within 45 days. 


ITC: Toyo files new complaint regarding tire design patents

On August 14, 2013, Toyo Tire & Rubber Co., Ltd. of Japan filed a new complaint requesting that the ITC commence an investigation pursuant to Section 337.  In summary, Toyo alleges 22 proposed Respondents infringe Toyo's design patents with one or more tire models, as follows (see pp. 41-42 of the complaint).

Toyo alleges Respondents' products are for many different types of vehicles and terrain, and Respondents' tires copy unique and innovative tread and side wall designs that Toyo incorporates into its tires.  Toyo's design patents at issue are directed to various sidewall and tread designs. 

The design patent alleged to be infringed by the most number of models is US D487,424, Fig. 2 of which is reproduced below.


Apple v. Samsung: ITC - No violation of Apple's Design Patents

According to the Notice of August 9, 2013, the ITC determined that Apple has proven a violation of Section 337 with respect to US 7,479,949 and 7,912,501, but that no violation has been proven with respect to US D618,678 and US D558,757.  Specifically, the Notice at p. 3 states:

[T]he Commission has determined that Apple has not proven a violation based on alleged infringement of the D’678, the D’757, the ‘922, and the ‘697 patents.  Specifically, the Commission has determined that the asserted claim of the D’678 patent is valid but not infringed, and that Apple’s iPhone, iPhone 4 and iPhone 4s practice the D’678 patent, but not the iPhone 3G and iPhone 3GS.  The Commission has also determined that the asserted claim of the D’757 patent is valid but not infringed, and Apple’s iPhone 3G and 3GS do not practice the D’757 patent. 
The Commission has further determined that Apple has proven a domestic industry exists in the United States relating to articles protected by the D’678, the ’922 and the ’697 patents, but not the D’757 patent.

As summarized by Eric Schweibenz at the ITC 377 Law Blog:

The Commission’s decision in favor of Apple in this investigation comes on the heels of President Obama’s recent decision to disapprove of the Commission’s determination to issue an exclusion order and a cease and desist order against various Apple products in Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers (Inv. No. 337-TA-794).  See our August 5, 2013 post for more details.


Apple v. Samsung: ITC Initial Determination

On October 24, 2012, the ITC issued an "Initial Determination on Violation of Section 337," in Inv. No. 337-TA-796.  In this case, Apple alleged Samsung had imported various infringing devices (smartphones and tablets) into the U.S. 

In summary, ALJ Tomas B. Pender determined that a violation of Section 337 of the Tariff Act of 1930 has been found in connection with several utility patents and U.S. Design Patent No. D618,678 (Fig. 1 of which is reproduced below).  ALJ Pender also concluded that this patent is not invalid.

ALJ Pender also determined that no violation of Section 337 was found in connection with U.S. Design Patent No. D558,757 (Figs. 3-4 of which is reproduced below), and concluded that this patent is not invalid.