Design Patents

Beats sues Yamaha for trade dress and design patent infringement

February 15, 2013

Beats Electronics, LLC (Beats) filed a complaint against Yamaha Corporation of America (Yamaha) on February 6, 2013, in the Central District of California, alleging infringement of Beats’ design patents and trade dress. The complaint includes a request that the court enter a judgment that requires Yamaha to deliver to Beats, for destruction, all of the alleged infringing headphones and any materials which depict the alleged infringing headphones. The complaint demands a jury trial on all issues.

According to the complaint, counsel for Beats notified Yamaha on November 30, 2012, of its belief that the Yamaha Pro 300, Yamaha Pro 400 and Yamaha Pro 500 headphones infringe Beats patents and Beats’ trade dress rights, and the complaint alleges that the Pro 300, Pro 400 and Pro 500 headphones are “knock-offs of Beats’ world-famous ‘Studio,’ ‘Solo,’ and 'Wireless’ model headphones.”

Filing of certified copies of priority documents: no change for design patent applicants

February 28, 2013

On March 16, 2013, the First-Inventor-To-File (FITF) provisions of the America Invents Act (AIA) will become effective. In preparation for the new statute, the USPTO published its final rules on the FITF on February 14, 2013.

In general, these final rules relate to the statutory changes to the definitions of novelty and prior art. One of the changes is that a U.S. patent or a U.S. patent application publication has a prior art effect as of the filing date of the foreign priority application for the subject matter disclosed in the priority document. In reaction to this change, new Rule 37 CFR 1.55(f) will require applicants to systematically file a certified copy of the foreign application, or an interim copy of the foreign application, within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.

Design Day 2013

February 28, 2013

The seventh annual USPTO Design Day, which discusses current issues in design patent law, will take place on April 23, 2013. The program is open and free to all, but registration is recommended via: http://2013designday.eventbrite.com/#

Recaps of Design Day 2011 and Design Day 2010:

Hague Agreement: A New Chapter for Protection of Industrial Design for the United States

March 7, 2013

On March 1, 2013, Teresa Stanek Rea (Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO) addressed the implementation of U.S. participation in the Hague Agreement on the Director’s Forum blog in "A New Chapter for Protection of Industrial Design for the United States."

The Patent Law Treaties Implementation Act of 2012, signed by President Obama, serves as the implementing legislation for both the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“the Hague Agreement”) and the Patent Law Treaty.

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):

Oakley Inc. v. Hire Order, Ltd.

April 8, 2013

In Oakley Inc. v. Hire Order, Ltd. (3:12-cv-02346-DMS-WMC), the U.S. District Court of the Southern District of California issued an Order on March 28, 2013, denying Hire’s motion for partial summary judgment of non-infringement.

As shown in Exhibit B of the Complaint filed on September 26, 2012, Oakley, Inc. (Oakley) issued a letter to Hire Order, Ltd (Hire) on June 22, 2012, demanding that Hire cease sales of its Sportsman Eyewear video recording system.

Hague Agreement (Guest Post)

April 10, 2013

Further to our prior coverage of the implementation of the Hague Agreement, we are pleased to publish the following from Audrey Pastoret, a guest of ours from France.

The Patent Law Treaties Implementation Act of 2012 signed by President Obama on December 18, 2012 implements the Hague Agreement in the United States. It is intended to provide industrial designs with protection in states and governmental organizations parties to this arrangement through a single international application effected at the WIPO. Before the Hague Agreement, an application had to be filed in every country where protection was desired, resulting in several applications being filed for a single design patent. Under the Hague agreement a single application can provide protection in multiple countries.

IP Chat Channel - Design Patent Prosecution: Advanced Topics

June 10, 2013

On May 23, 2013, the IPO held a webinar on its IP Chat Channel called "Design Patent Prosecution: Advanced Topics," hosted by Pamela Sherrid.

Katie Maksym, design patent manager for Nike, Inc. first presented "Best Practice Tips from the Field of Play." Ms. Maksym highlighted the role of infringement awareness as a source of information to draft claims.

Keurig v. Rogers: Dismissed on Summary Judgment

June 10, 2013

Following up on our earlier post, Keurig’s suit against Rogers Family Co. (“Rogers”) has been dismissed on summary judgment. The district court granted Rogers’ motion for summary judgment of non-infringement of U.S. Patent No. D502,362 and two utility patents.

In a Memorandum and Order on Summary Judgment (“Order”), the court compared the accused product with the claimed design in order to determine if the two are plainly dissimilar. The following is a comparison provided on page 12 of the Order:

Proposed Rules Published: Changes to Implement the Hague Agreement concerning International Registration of Industrial Designs

December 20, 2013

The Patent Law Treaties Implementation Act of 2012 has resulted in new rules being proposed for implementing the Act.

On October 21, 2013, 78 FR 62367 was published as a final rule to implement the Patent Law Treaty, which generally does not affect design patents, but does provide restoring the right of priority after the 6-month period to claim priority, within 2 months from the expiration of the 6-month period and upon grant of a petition that shows the delay was unintentional.

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.”

IPO submits comments regarding Proposed Hague Rules

February 4, 2014

As previously reported, on November 29, 2013, 78 FR 71869 was published as a proposed rule to implement the Hague Agreement.

On February 4, 2014, the Intellectual Property Owners Association (IPO) submitted comments on the proposed Hague rules.

Gillette Design Patent Enforcement

February 11, 2014

Over the past 6 months the Gillette Company (Gillette) has filed two different complaints asserting infringement of numerous design patents to protect several of its razor blade related products. In the first case, Gillette recently obtained a consent judgment, illustrating the value of design patents in its patent portfolio. The second case is ongoing.

First, on October 10, 2013, Gillette filed a complaint against BK Gifts, BK Razors, Brian Patrick, Kim Murry, and Zilo Store, Inc. (collectively, “Defendants”), in the Southern District of Ohio (Gillette Company v. BK Gifts, transferred to the Northern District of Ohio, Docket No. 3-13-cv-02241-1).

Skyline Design Patent Complaints

February 25, 2014

Skyline USA, Inc. (Skyline) recently filed two complaints asserting infringement of a design patent directed to a combined flashlight and stun gun.

In the first complaint filed February 7, 2014, Skyline alleged infringement by Cutting Edge Products, Inc. (Cutting Edge), in the Middle District of Florida, Orlando division (6:14-cv-212-ORL-36GJK).

Interim Rule Regarding Continued Prosecution Applications

March 10, 2014

The United States Patent and Trademark Office (Office) has adopted an interim rule, effective March 5, 2014, pertaining to Continued Prosecution Applications (CPAs), which are only available for design patent applications.

A CPA is typically filed when prosecution on the merits is closed in a design patent application. For example, after the Examiner issues a final rejection in a design application, the Applicant may file a CPA in order to continue prosecution in front of the Examiner, instead of appealing the final rejection to the Patent Trial and Appeals Board. A Request for Continued Examination (RCE) is not allowed in a design patent application.

Mulch v. Novel - Request for Declaratory Judgment

March 14, 2014

International Mulch Company, Inc. (Mulch) filed a complaint requesting declaratory judgment against Novel Ideas, Inc. (Novel) in the Eastern District of Missouri Eastern Division on March 11, 2014 (4-14-cv-00446).

In the complaint, Mulch requested a Declaratory Judgment of patent non-infringement and invalidity of two design patents owned by Novel, US D640,268 (’268) and US D654,191 (’191), both directed to flexible landscape edging.

ABA-IPL: April 2-4, 2014

March 26, 2014

The American Bar Association (ABA)’s Section of Intellectual Property Law (IPL) will be holding its 29^th Annual Intellectual Property Law Conference on April 2-4, 2014, at the Crystal Gateway Marriott Hotel, in Arlington, VA. Of interest, on April 3^rd at 1:45, conference participants will be able to attend a workshop entitled “The Rise of Design Protection: From Spoons & Carpets to Smartphones & Cars.” The ABA-IPL published this summary for the workshop:

Design protection has recently taken the spotlight due to some high-profile, high-stakes cases. Join these panelists for a practitioner-focused overview of design rights, where they will look into: why design patents require a different perspective from utility patents; what the most successful approaches are in prosecuting and litigating design patents; whether the approach to design rights in the U.S. is different from other countries undergoing such a surge.

Written Description – Where do we go from here?

March 31, 2014

As previously reported, the USPTO published on February 6, 2014, a Request for Comments on the Written Description Requirements for Design Applications. The Request followed a heated discussion duringDesign Day 2013 when USPTO Design Practice Specialist, Mr. Joel Sincavage gave specific examples illustrating an original design claim and an amended design claim where, in the amended claim, only a subset of elements of the original disclosure were shown using solid lines.

The USPTO seemed to take the position that, in these “rare situations,” the inventor may not have had possession of the newly claimed design because the claimed subset of elements was “seemingly unrelated” to the original design. Some members of the public attending Design Day raised concerns regarding the Office’s position.

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.

Design Day 2014

April 15, 2014

Celia Murphy, Supervisory Patent Examiner for technology Center 2900 (‘TC 2900’) was the host for Design Day 2014, the 8^th Annual Design Day. Design Day 2014 appeared to have a significant increase in participants as the USPTO Madison Auditorium had only a few empty seats throughout the day.

Andy Faile, Deputy Commission for Patent Operations started the day off by highlighting two initiatives by the USPTO: interview practice, and a technical training program. Mr. Faile noted that a growing number of interviews were being conducted, benefiting examiners and practitioners alike, and that the number of requests for WebEx interviews was also increasing.

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