Federal Circuit

Federal Circuit Urges Caution in Construing Design Patents

February 26, 2010
In a decision issued February 24, 2010 (Case No. 2008-1596), a panel of the Federal Circuit reversed a finding by the International Trade Commission that a design patent owned by Crocs, Inc. was not infringed by various respondents. In explaining its reasoning, the Court warned against reliance on detailed verbal descriptions of the claimed design, stating:

"This court has cautioned, and continues to caution, trial courts about excessive reliance on a detailed verbal description in a design infringement case. See, e.g., Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc). In Egyptian Goddess, this court warned that misplaced reliance on a detailed verbal description of the claimed design risks undue emphasis on particular features of the design rather than examination of the design as a whole. Id. at 679–80. In many cases, the considerable effort in fashioning a detailed verbal description does not contribute enough to the infringement analysis to justify the endeavor. See id. at 680. Depictions of the claimed design in words can easily distract from the proper infringement analysis of the ornamental patterns and drawings." Slip Op. at 9-10.

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Factoring Out of Functional Elements Proper in Design Patent Infringement Analysis

March 3, 2010
The U.S. Court of Appeals for the Federal Circuit issued their second significant design patent opinion in the past two weeks.  In the most recent decision, the Court affirmed a finding of no-infringement of a design patent after a district court had first construed the claim by factoring out the functional elements of the design.  Richardson v. Stanley Works, Inc., No. 2009-1354 (Fed. Cir., Mar. 9, 2010).   


The patent at issue (U.S. Design Patent No. D507,167) claimed the design for a carpentry tool known as a stepclaw.  The stepclaw includes a handle, hammer-head, jaw, and crow-bar.  The district court found that "the overall configuration of these four elements is dictated by the functional purpose of the tool and therefore is not protected by [Richardson's] design patent." Richardson v. Stanley Works, Inc., 91 USPQ2d 1604 (D. Az. 2009).  The district court construed the claim to exclude any "primarily functional" elements. Id. at 1606.  Regarding the jaw on the stepclaw, the district court noted that "none of the prior art designs are as similar to Richardson's patented design as is Stanley's." Id. at 1607.  Often, the presence of alternative forms for a feature (e.g. a jaw) that performs a certain function suggests that the claimed form of the feature is ornamental.  However, the district court also noted that "Richardson had to design the jaw the way he did...to function as 'a step to elevate the worker without a ladder.'" Id.  Thus, the district court concluded that the "basic jaw design used by Richardson and Stanley...is primarily functional." Id.  Regarding the features determined to be ornamental, the district court found "little similarity" and noted that the differences between the two tools are substantial to find infringement.  

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

January 25, 2011
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 partesreexamination that led to the Federal Circuit appeal can be found here.

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

January 30, 2013
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.

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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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Pacific Coast v. Malibu Boats

January 10, 2014
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.”

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

April 22, 2014
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

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MRC Innovations v. Hunter – to the Supreme Court!

July 2, 2014

On July 1, 2014, MRC Innovations filed a Petition for Writ of Certiorari in the Supreme Court of the United States.  As we previously discussed on April 22, 2014, in MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 2013-1433 (Fed. Cir., Apr. 2, 2014), the Federal Circuit addressed the obviousness of patents (i.e., D634,488 and D634,487) covering ornamental designs for dog jerseys.

Figures from the ‘488 patent are reproduced below:

Figures from the ’487 patent are reproduced below:

MRC appealed a grant of summary judgment of obviousness of both patents  issued by Judge Gaughan from the Northern District of Ohio.  The Federal Circuit affirmed.

In the Petition, MRC proposes a question as to whether the principle set forth in KSR Int’l v. Co. v. Teleflex, Inc., 550 U.S. 398 (2007), "that when making an obviousness determination under 35 U.S.C. § 103 a court must provide an explicit analysis regarding whether there was an apparent reason to combine the known elements in the fashion claimed by the patent, also applies to design patents." Petition, page i.

The Petition argues "[a]s properly noted by the Federal Circuit more than 30 years ago, '35 U.S.C. § 103 (and all the case law interpreting that statute) applies with equal force to a determination of the obviousness of either a design or utility patent.' Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1441 (Fed. Cir. 1984)," but that "the Federal Circuit has significantly departed from this Court’s case law regarding 35 U.S.C. § 103 insofar as design patents are concerned." Petition, page 5.

Citing to KSR, the Petition argues that instead of a court providing "an explicit analysis explaining the apparent reason to combine known elements in the fashion claimed by the patent" for design patent cases, the Federal Circuit has rather relied on a "'so related' test in design patent cases that, when applied, entirely dispenses with the requirement that the court articulate whether there was an apparent reason (i.e., a “basis”) to combine the known elements in the fashion claimed by the patent." Petition, pages 5-6.

In summary, MRC is arguing that the court must articulate a rationale for combining teachings of the prior art to arrive at the claimed design.  In utility patent cases, this "rationale" must be articulated, consistent with KSR.  See the exemplary rationales identified in MPEP 2143.

The Petition argues that the Federal Circuit erred by merely requiring that certain elements of the claimed design be found in a related prior art, and that such a "so related" test is an "over simplification that substitutes relatedness for obviousness." Petition, page 18.

In some aspects, it appears MRC is arguing that the Federal Circuit applied a test similar to determining whether a prior art reference is analogous art.  In re Klein, 98 USPQ2d 1991 (Fed. Cir. June 2011), established two tests for determining whether a reference is analogous and thus qualifies as prior art for an obviousness determination, citing to In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004):

Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

The USPTO issued examination guidance in view of In re Kleinon July 26, 2011, which emphasized that a "reference not in the same field of endeavor as the claimed invention must be reasonably pertinent to the problem to be solved in order to qualify as analogous art and be applied in an obviousness rejection."

Turning back to the "so related" test discussed in the Petition, this test appears to be a summarization of the analogous art tests discussed above.  Specifically, a reference is "so related" when it is in the same field of endeavor (first test) or when the reference is reasonably pertinent to the particular problem with which the inventor is involved (second test).  For design cases, this second test may have limited applicability, because evaluation of the issue (at least as established by the USPTO in the examination guidance) requires a review of the problem to be solved by the claimed design, which may be difficult given there is generally no detailed discussion of problems in design applications.

However, merely concluding a prior art reference that teaches a specific design element is in the same field of endeavor, and is thus "so related," does not result in a proper and complete conclusion of obviousness.  Specifically, the Supreme Court in KSR, 550 U.S. at 418, quoting In re Kahn,441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated “rejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” 

Consequently, it appears MRC is arguing that the Federal Circuit merely applied a test to determine whether a prior art reference is analogous (i.e., "so related") in determining whether prior art design elements can render a design obvious, without establishing an "articulated reasoning" for combining the prior art design elements to arrive at the claimed design.  Specifically, the Petition argues the “'so related' test allows for... random picking and choosing of elements from the prior art without articulating any reasons or basis for doing so," and is thus not in accordance with the principle of KSR.

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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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Supreme Court to Hear Design Patent Damages Issue

March 21, 2016
The U.S. Supreme Court granted Samsung’s petition for writ of certiorari in the Samsung v. Apple appeal. The grant was limited to Question 2 from the petition, which is as follows:

2. Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

Samsung’s position in its petition is that the three design patents at issue (U.S. Design Patent Nos. D618,677, D593,087, and D604,305) “cover only specific, limited portions of a smartphone’s design: a particular black rectangular round-cornered front face, a substantially similar rectangular round-cornered front face plus the surrounding rim or ‘bezel,’ and a particular colorful grid of sixteen icons.” Samsung states that, despite this limited coverage, “the Federal Circuit allowed the jury to award Samsung’s entire profits from the sale of smartphones found to contain the patented designs—here totaling $399 million.” The Federal Circuit opinion can be found here. Contrary to the position taken by the Federal Circuit, Samsung does not believe that Section 289 of the Patent Act compels this result. Instead, Samsung’s position is that “Section 289 nowhere defines the ‘article of manufacture’ to which a patented design is applied as the entire product (here, a smartphone) rather than the portion of the product depicted in the design patent.”
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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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