Friday, March 24, 2017

Supreme Court Finds Cheerleader Uniform Designs Copyrightable

Last fall, we examined the case of Star Athletica, L.L.C.  v. Varsity Brands, Inc., then pending before the Supreme Court on the question of whether the design of a cheerleader uniform is copyrightable subject matter, or if it is a useful article.  In a 6-2 decision, the majority laid out a new test for analyzing the separability of designs applied to useful articles, and further found that the cheerleader uniform designs at issue in this case were protectable works under that test.  This decision grants expansive rights to authors who apply designs to utilitarian objects, but as we will see below, the new test is far from free of ambiguity.


Tuesday, December 6, 2016

Supreme Court Sides with Samsung on Design Patent Damages

On December 6, 2016, the Supreme Court issued a unanimous opinion authored by Justice Sotomayor in the Samsung Electronics Co., Ltd. v. Apple, Inc. case concerning apportionment of design patent damages under 35 U.S.C. § 289. Specifically, § 289 makes it unlawful to produce or sell an “article of manufacture” bearing a patented design and makes infringers liable to the patent holder “to the extent of [their] total profit.” The Supreme Court’s ruling rejects Apple’s argument and holds that the meaning of the phrase “article of manufacture” can refer to a single component within a multicomponent product sold to consumers. In support of its reasoning, the Court cites a similarly broad interpretation of the phrase as previously applied to 35 U.S.C. § 171. The § 171 statute defines subject-matter eligibility for design patents.

Monday, November 14, 2016

District Court Relies on Prosecution History Estoppel in Judgment on the Pleadings

Two years ago we reported on the landmark Federal Circuit decision in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, holding for the first time that the doctrine of prosecution history estoppel applied to design patents.  A lingering question following that decision was whether this doctrine was likely to substantially impact design patent infringement cases going forward.  While prosecution history estoppel would bar patentees from claiming an embodiment that they had surrendered, the Federal Circuit also held that the estoppel effect only applied to the discrete embodiment that were disclaimed, and not to the range of embodiment between what was claimed and what was dedicated to the public.  Thus, unless an accused infringer seemingly designed their product to exactly copy an embodiment that the patentee had affirmatively disclaimed, one could wonder whether we might ever see prosecution history estoppel successfully invoked in a district court case.

Last week, prosecution history estoppel was successfully invoked in a district court case.


Thursday, October 20, 2016

The Intersection of Copyrightable Works and Useful Articles at the Supreme Court

While most of the design patent world is focused on the Supreme Court's review of the Apple v. Samsung case, which we reported on last week, the Supreme Court is also set to hear oral arguments on Star Athletica, LLC v. Varsity Brands, Inc., a copyright case that could have implications for the scope of rights available to design owners.



Monday, October 17, 2016

Courtroom Sketches from Apple v. Samsung

As a follow-up to last week's post, we wanted to share the courtroom sketches from Apple v. Samsung that were graciously provided by Art Lien of courtartist.com.  Art really captured the look of confusion on the Justices' faces...






Tuesday, October 11, 2016

Eight Telling Quotes from Apple v. Samsung Oral Arguments

So it finally comes to this. After five years of litigation, a dozen appeals to the Federal Circuit, and close to 1 Million tweets, the Apple v. Samsung case goes before the Supreme Court today for oral arguments. The sole issue being decided on appeal is whether an infringer's profits should be apportioned under 35 U.S.C. § 289. Or, as Samsung poses the question - "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?"

We're lucky to be reporting live from the Supreme Court today as the Supreme Court hears its first design patent case in over 100 years.  For this initial post, we'll be focusing on some of the more telling questions (and answers) from the justices during the hearing.   Continue reading after the jump for some of the more noteworthy quotes and our reaction.

Thursday, October 6, 2016

Premiere Gem Corp. v. Wing Yee Gems – Petitioner Turned Down in Diamond Jewelry Design IPR

In July, the Patent Trials and Appeals Board (PTAB) declined to institute Inter Partes Review of a design patent for an ornamental design of diamond jewelry.  Then, just last week, the Board denied a petition to rehear that earlier decision.  These decisions in Premier Gem Corp. et al. v. Wing Yee Gems & Jewelry Ltd. (IPR2016-00434) demonstrate how failing to introduce into evidence the details of the prior art can be fatal to a claim of anticipation or obviousness. They also offer a reminder that challenged designs and the prior art are to be compared on the basis of “overall visual appearance,” not mere “design concepts.”

Petitioners Premier Gem Corp. and Jay Gems Inc. (collectively, “Petitioner”) petitioned the Board to invalidate U.S. Design Patent No. D618,132 (the “’132 patent”).  The patent claims a jewelry design in which a large “full cut” central diamond is surrounded by nine smaller “single cut” diamonds.  (As the decision explains, “[f]ull-cut diamonds have more facets than single-cut diamonds, and typically produce a greater sparking effect.”)  The two figures of the patent are reproduced below:


U.S. Design Patent. D618,132