CAFC

In re Owens (CAFC March 26, 2013)

April 1, 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): 
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Coming out of the dark ages

April 3, 2014
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.
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Munchkin v. Luv N’Care – CAFC Affirms PTAB

April 16, 2015
On April 14, 2015, the U.S. Court of Appeals for the Federal Circuit ("CAFC") affirmed the Patent Trial and Appeal Board’s decision that Luv N' Care's U.S. Patent Number D617,465 ("the '465 patent") was unpatentable. The PTAB’s decision was the first inter partes review initiated by the USPTO for a design patent. The CAFC issued a Rule 36 judgment that affirmed this decision without opinion.  For reference, Figures 2 and 3 from the '465 patent are provided below.   
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Apple v Samsung – Design Patents Hold Firm, Trade Dress Gives Way

June 15, 2015
On May 18, 2015, the Federal Circuit issued its long-awaited decision on Samsung’s appeal of Apple’s nearly $930 million 2014 judgment for infringement of Apple’s design patents and utility patents covering various smart phones and tablets, and for dilution of its trade dresses. See Federal Circuit Appeal Nos. 2014-1335, 2015-1029.  See also our previous discussions regarding the Apple-Samsung dispute here and here. 
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Design Patents Remain a Valuable Part of a Patent Portfolio after Samsung v. Apple

February 2, 2017
On December 6, 2016, the U.S. Supreme Court issued its long awaited opinion addressing the issue of whether design patent owners were always entitled to an infringer’s total profits of any end product, even a multi-component product. Samsung Electronics Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016). The Supreme Court overturned the widely held understanding that design patent owners were always entitled to an infringer’s profits and held that total profits are not necessarily available where the patented design is one component of a multi-component product. Despite the Supreme Court’s ruling, and uncertainty in how its decision will be implemented, design patents remain a unique and valuable tool in a U.S. patent portfolio.
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Copyright © 2018 Oblon, McClelland, Maier & Neustadt, L.L.P. | Disclaimer
The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important design patent issues. These postings are in no way representative of the opinions of the Oblon firm, or its clients, but rather the personal views of the individual authors.