The USPTO's Design Day 2016, held April 19th, started off with a welcoming address from the Commissioner for Patents, Andrew Hirshfeld. Commissioner Hirshfeld noted the increasing importance of design patents, as U.S. design patent application filings have increased from 11,000 in 1987 to 37,000 in 2015. Commissioner Hirschfeld encouraged everyone to submit comments and examples for the application of the Written Description Requirement in Design Applications, which was published on April 15, 2016 (reported here). Commissioner Hirshfeld also announced that 15 design examiners will be working out of the USPTO's San Jose satellite office.

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On April 15, 2016, the U.S. Patent and Trademark Office (“USPTO”) published a Request for Comments on the Application of the Written Description Requirement to Specific Situations in Design Applications (“Request”). See 81 F.R. 73, pp. 22233-22236. In particular, the USPTO is seeking the public’s help in identifying examples “to illustrate [its] proposed approach or any suggested approach for applying the written description requirement in design applications.” Id. (emphasis added).

Importantly, this Request also points out that “it became clear that there exists a need to supplement the current provisions in the Manual of Patent Examining Procedure (‘‘MPEP’’) relating to 35 U.S.C. 112 for design applications.” Id. (Stop the press! Does the Request really say that? Yes, yes it does. Please read on….)

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Oakley, Inc. (“Oakley”) filed suit against Treasure Franchise Company, LLC (“Defendant”) on March 29, 2016 in the United States District Court for the Southern District of California, alleging infringement a number of Oakley’s design patents for eyewear.

The patents detailed in the suit include seven Oakley design patents issued between December 11, 2007 and October 22, 2013 pertaining to its eyewear designs. These are design patents D692,047, D610,604, D616919, D620,970, D649,579, and D661,339.

In the complaint, Oakley alleges the Defendant infringes by making and selling nearly identical sunglasses, including at several California stores. Examples cited include Defendant’s eyewear model MD3072-RV, JR Optics 7306CW, JR Optics 314L, JR Optics 318L, JR Optics 311L, and JR Optics Dxtreme – DXT5318/CM.

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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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NIKE, Inc. (“Nike”) filed suit against Fujiann Bestwinn (China) Industry Co., Ltd. (“Bestwinn”) on February 17, 2016 in the United States District Court for the District of Nevada, alleging infringement of a number of Nike’s design patents for various aspects of athletic shoes.

In the complaint, Nike alleges Bestwinn infringes its design patents by attending the WSA trade show in Las Vegas, Nevada at least twice yearly and promoting and selling the infringing shoes. 

The patents detailed in the suit include eighteen Nike design patents issued between April 26, 2011 and December 29, 2015 pertaining to Nike's shoe designs (see Table 1 below from the complaint).

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