Design Patents

Design Patents & Reexamination - A Discussion With Design Patent Expert Philippe Signore

February 22, 2010

Philippe Signore was recently interviewed on Oblon, Spivak's Patents Post Grant Law Blog. The text of that interview is below.

Design Patents & Reexamination -- A Discussion with Design Patent Expert Philippe Signore

Design patents are significantly different from utility patents in that design patents do not protect function, but instead, protect ornamental features. Design patent are defined in scope by the content of the drawings as opposed to the words of a set of claims. Further, design patents are accorded a patent term of 14 years from issue, as opposed to 20 years from filing.

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.

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.

Design Day 2010

April 8, 2010

Design Day 2010 was held on April 6 at the USPTO. A number of our attorneys walked across the street to the USPTO and attended this annual event focused on US design patents. A wide variety of speakers gave presentations, including USPTO officials, industrial designers, an ITC judge and practitioners. The following article summarizes these presentations.

Robert Spear was the Master of Ceremonies. Mr. Spear is Supervisory Patent Examiner for Technology Center 2900 ("TC 2900"), which is devoted to examining design patent applications. A number of our attorneys have conducted personal interviews with Mr. Spear, and it was a pleasure to see this well-respected design examiner act in this official capacity.

Expedited Examination of a Design Patent Application

April 12, 2010

The average time to obtain a US Design Patent under regular examination is about 15 months from filing to issue. This pendency is short relative to Utility Patent Applications, which require on average over 35 months of examination before issuing. However, some companies need Design Patent protection even faster. For example, when an competitor is about to launch a similar product on the market, or when investors are demanding patent protection before further funding, or when the product is typically in vogue with consumers for only a short period of time, companies need a Design Patent as soon as possible. In such situations, they can request the USPTO to examine their design patent applications under an expedited procedure provided under 37 CFR 1.155. Under the expedited procedure, also known as the “Rocket Docket,” a design application issues on average within 5 months!

This expedited procedure is available upon request to any design applicant who complies with certain requirements, as discussed next.

BPAI Emphasizes Obviousness Test in Reversing Inter Partes Design Patent Reexamination

April 28, 2010

In inter partes reexamination 95/000,034, Vanguard Identification Systems Inc., v Bank of America Corporation, the BPAI reversed the examiners obviousness rejection, emphasizing the difference between a proper obviousness determination for design and utility patents. An obviousness determination for a utility patent must consider the perspective of one of ordinary skill in the art to which the invention pertains. For design patents, obviousness is based on the perspective of designer of ordinary skill who designs articles of the type involved. As this case demonstrates, failing to appreciate the distinction can lead to dire consequences for third party requesters.

Please click here for full article with images.

On the importance of U.S. Design Patent Applicants to Comply with Duty of Disclosure at USPTO

May 17, 2010

Plaintiff Yokohama Rubber Company LTD (“Yokohama”) sued Defendant Stamford Tyres (“Stamford”) in the U.S. District Court for the Central District of California (Case No. SACV 07-00010-CJC). Yokohama asserted that Stamford infringed U.S. Design Patent No. D512,014 (the “asserted patent”), directed to the ornamental design for an automobile tire, by selling the Stamford ST-08 tire. As a defense, Stamford alleged that the asserted patent was unenforceable due to Yokohama’s inequitable conduct before the United States Patent and Trademark Office (“USPTO”), for the failure to cite U.S. Patent No. D443,565S (the “prior art reference”) during prosecution of the asserted patent.

To prove inequitable conduct, the accused infringer must present evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the USPTO. Stamford, the accused infringer, showed the non-disclosed prior art reference was material by alleging that the Japanese Patent Office rejected the Japanese counterpart to the asserted patent solely because of its similarity to the prior art reference. Further, Stamford showed intent to deceive by alleging that one of the inventors of the asserted patent was involved with the prosecution of the Japanese counterpart to the asserted patent and knew that the Japanese Patent Office initially rejected that application because of its similarity to the prior art reference, and yet failed to disclose the prior art reference to the USPTO during prosecution of the asserted patent.

USPTO Affirms Ford’s Patented Vehicle Grill Design as Obvious Over Published “Spy” Photograph

June 9, 2010

It is true what they say, secrets can come back to haunt you. At least they did for Ford in a recent appeal before the USPTO’s Board of Patent Appeals and Interferences (the BPAI) where the BPAI affirmed that an automotive spy photograph published in Trailer Life Magazine, in combination with other art, was sufficient to render obvious the claimed design of a front grill for a Ford Expedition.

Please click here for full article with images.

U.S. Continues to Delay Ratification of the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs

June 11, 2010

Brief History of the Hague Agreement

The Hague Agreement is part of the legal framework of the Hague System -- a system that provides a simplified mechanism for registering industrial designs in contracting states. Under the Hague Agreement, an industrial design can be registered in any number of designated contracting states by filing a single international application, in a single language, with a single set of fees, and in a single currency.

Johanna Foods, Inc. v. Coca-Cola - D.N.J.

October 21, 2010

In response to efforts by Coca-Cola to enforce its design patents, Johanna Foods, Inc. filed a declaratory judgment complaint on September 21 in the U.S. District Court for the District of New Jersey against Coca-Cola, d/b/a Simply Orange Juice Company. According to the complaint, in December 2009, Coca-Cola sent Johanna a letter asserting their rights under trade dress law and under seven design patents relating to beverage containers. In that letter, Coca-Cola allegedly stated that it had filed suit against third parties to whom Johanna had previously supplied and/or licensed a carafe-shaped container design and that the third parties had “each agreed to cease use of the accused design in settlement of the action.” The complaint also stated the Coca-Cola sent an August 2010 letter to Johanna customer ALDI asserting federal and state trademark rights as well as design patent rights against the beverage packaging that Johanna sold to ALDI, again citing “previous successful efforts” against other third parties. In September 2010, Coca-Cola then allegedly sent another letter to Johanna, reviewing the previously stated enforcement efforts and threatening suit over Johanna’s supply of beverage containers to ALDI as well as Johanna’s use of its own beverage containers in its own Tree Ripe brand.

Johanna’s complaint asserts that Coca-Cola’s “previous successful efforts” resulted in confidential, out-of-court settlements and not adjudication on the merits of the cases. Johanna also states that Coca-Cola’s litigation threats may significantly harm Johanna’s business relationship with ALDI and its profits from its Tree Ripe brand. The complaint further notes that Johanna itself has design patents on both its Nature’s Nectar Bottle (for which ALDI is a customer) and its Tree Ripe Bottle.

In re Certain Wind and Solar-Powered Light Posts and Street Lamps - ITC

October 21, 2010

As reported by Oblon Spivak’s ITC Blog, the ITC has instituted an investigation in response to a complaint asserting design patent rights for a solar-powered light post and street lamp design. The complainants, a set of New York, New York companies referred to as the Duggal companies, assert U.S. Patent No. D610,732 S (“the ‘732 patent”) for a Wind and Solar-Powered Light Post. The respondents are Gus Power Incorporated of Canada; Efston Science Inc. of Canada; King Luminaire, Inc., of Jefferson, OH; and The StressCrete Group of Canada. The complainants allege that the accused products are “substantially similar to,” or “virtually identical to,” the design protected by the ‘732 patent, citing specific incidences of alleged infringement. No other patents are asserted in the complaint.

The statute in 19 U.S.C. § 1337(a)(1)(B)(i)-(ii) makes no distinction between utility and design patents, but gives the ITC jurisdiction over any patent infringement meeting the other requirements of Section 337. In this case, the complainants report in their complaint that they have no other current litigation related to the ‘732 patent, thus resting the enforcement of their design patent rights on their requests to the ITC for an exclusion order and a cease-and-desist order.

Design Patents and False Marking

February 24, 2011

The false marking statute (35 U.S.C. § 292) expressly authorizes members of the public to bring an action on behalf of the U.S. government (i.e., a qui tam action) for a product falsely marked with a patent number with the intent of deceiving the public. Theoretically, the penalty for falsely marking a product can be a hefty one as the false marking statute allows the court to assess a sanction of up to $500 for every offense. The Federal Circuit in Bon Tool held in late 2009 that “offense” means on a per article basis. Ever since the Bon Tool decision, the number of false-marking lawsuits has surged because of the economic windfall that might result from mass-produced, falsely marked products. Products marked with design patent numbers are not exempt from such actions.

One recent complaint filed by Main Hastingsagainst the Village Company in the Eastern District of Texas alleges the Village Company violated § 292 by marking a Mr. Bubble bottle with design patent no. D-408,290 (“the ‘290 patent). Specifically, Main Hastings alleges that the Village Company marked the Mr. Bubble bottle knowing that that the ‘290 patent does not cover the ornamental design of the Mr. Bubble bottle. In Exhibit B of the complaint, Main Hastings sets forth a comparative analysis between two Mr. Bubble bottles and Figure 2 of the ‘290 patent to demonstrate the alleged false marking. Included below are images from the second comparison of Exhibit B of Main Hastings’ complaint.

Sam Adams Brewer Asks ITC To Block Beer Glasses

February 25, 2011

As reported on Oblon, Spivak’s ITC Blog, Boston Beer Corporation (“Boston Beer”) filed a complaintrequesting that the ITC commence an investigation pursuant to Section 337.

Boston Beer, which is a subsidiary of the brewer of Samuel Adams beer, alleges that 1 Source Signature Glassware, Inc., di Sciacca Co., and San Tan Brewing Co. (collectively, the “Proposed Respondents”) — all of Chandler, Arizona — unlawfully import into the U.S. and/or sell within the U.S. after importation certain glassware that infringes U.S. Patent Nos. D582,213 and D569,189 (collectively, the “asserted patents”).

Bell Helicopter Awarded Large Judgment Against No-Show Defendant

March 4, 2011

Bell Helicopter was recently awarded $22.5 million in a trade dress infringement suit against the government of Iran. Judge Urbina, writing for the U.S. District Court for the District of Columbia, handed down the award two years after entering a default judgment against the government of Iran. Iran failed to respond to Bell’s complaint or enter an appearance in court, resulting in the default judgment.

Bell’s trade dress suit related to helicopter designs which were also protected, in part, by three design patents: D388,048, D375,077 and D363,054. Iran was accused of manufacturing at least thirteen counterfeit helicopter designs beginning in 2001 and promoting the counterfeit helicopters at an air show held annually in Iran. Although two of the design patents in question have expired, Bell succeeded in its claim for trade dress infringement by demonstrating to the satisfaction of the court that its helicopter designs are inherently distinctive and have acquired secondary meaning since being first introduced in 1966. The court also agreed with Bell that Iran’s designs are “confusingly similar” to that of Bell and that Bell’s designs are non-functional and ornamental. See Opinion, at page 6.

Chrysler’s ITC Complaint alleging Design Patent Infringement of a Concept Vehicle Results in Settlement, Cease and Desist Orders

March 17, 2011

Chrysler’s ITC Complaint alleging Design Patent Infringement of a Concept Vehicle Results in Settlement, Cease and Desist Orders and Limited Exclusion Orders

See our posting on the ITC 337 Law Blog of March 16, 2011.

Garmin Ltd. v. Bryton Inc.

March 24, 2011

Garmin filed suit against Bryton in a Kansas federal court, claiming that Bryton devices for cycling enthusiasts infringe design and utility patents held by Garmin. The design patent in suit is U.S. Patent No. D632,984 (hereinafter “the ‘984 patent”) and is titled “Electronic Device.” Figure 1, which is a front perspective view, and Figure 2, which is a rear perspective view, of the ‘984 patent are reproduced below.

Predator Outdoor Products, LLC v. Oakley, Inc.

March 25, 2011

On March 21, 2011, Predator Outdoor Products, LLC (“Predator”) filed suit against Oakley, Inc. (“Oakley”) in the U.S. District Court for the Eastern District of Pennsylvania. Predator’s Complaint seeks a declaratory judgment that Predator does not infringe any valid claim of U.S. patent no. 5,387,949 (“the ‘949 patent”) or U.S. D523,461 (“the D461 patent”).

Predator filed suit after receiving a letter from Oakley asserting that Predator’s i-Kam Extreme products infringe the ‘949 and D461 patents. Oakley’s letter further demanded that Predator “immediately cease” infringing the patents, demanded an accounting for the sales of all allegedly infringing products, and enclosed a draft Complaint against Predator.

Federal Circuit Rules False Marking Claims Must Be Pled With Particularity

March 29, 2011

As a follow-on to our previous blog entry on the recent surge in the number of false marking lawsuits being filed, on March 15, 2011, the Federal Circuit in In Re BP Lubricants USA Inc., Misc. Doc. No. 960 (C.A.F.C., March 15, 2011) granted a petition for a writ of mandamus directing the United States District Court for the Northern District of Illinois to grant a motion to dismiss a complaint pursuant to the False Marking Statute, 35 U.S.C. § 292. In granting this petition, the Federal Circuit held as a matter of first impression that the complaint did not meet Fed. R. Civ. P. Rule 9(b)’s particularity requirement.

In the complaint, Thomas Simonian, a patent attorney, had alleged that BP Lubricants USA Inc. (BP) continued to falsely mark certain CASTROL® branded bottles with design patent number D314,509 after the design patent covering the bottles had expired. Simonian claimed that: “(1) BP knew or should have known that the patent expired; (2) BP is a sophisticated company and has experience applying for, obtaining, and litigating patents; and (3) BP marked the CASTROL products with the patent numbers for the purpose of deceiving the public and its competitors into believing that something contained or embodied in the products is covered or protected by the expired patent.”

Polo Ralph Lauren is on the Table

May 19, 2011

Brandon Judkins filed a complaint May 16, 2011, case number 1:11-cv-00661, in the U.S. District Court for the Southern District of Indiana, alleging Polo Ralph Lauren Corporation has infringed U.S. D591,090.

The following images are reproduced from pages 4-5 of the complaint, where line drawings from U.S. D591,090 are shown on the left, and the top image and the right images are photos personally taken by Mr. Judkins at stores in Indianapolis, Indiana.

Kraft Foods Sues Van Law Food Products Over Bottle

May 23, 2011

Kraft Foods filed suit against Van Law Food Products in the U.S. District Court for the Southern District of New York on May 17, 2011. In the Complaint, Kraft Foods alleges that the bottles sold by Van Law Food Products, including those sold under the Eating Right brand (pictured below) infringe six design patents held by Kraft Foods.

Eating Right Bottles (copied from Complaint) Kraft Bottles (Figs. 2-4 of D568,164)

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