Friday, April 30, 2010

Where It Began: Egyptian Goddess Slays Point of Novelty

The recent fervor in Design Patent cases stems largely from Egyptian Goddess, Inc. v. Swisa, Inc. (2008), in which the CAFC eliminated the “point of novelty” test long used by courts. Formerly, the "point of novelty" test existed as a "second and free-standing requirement for design patent infringement." The CAFC on review found this test inconsistent with the Supreme Court's decision in Gorham v. White (1871).

In Gorham, the Supreme Court made clear that “sameness of effect upon the eye, is the main test of substantial identity of design.” It then enunciated what has become known as the ordinary observer test:

“[I]f, in the eye of an ordinary observer, given such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.”

The CAFC attempted to reconcile existing precedent that applied a separate “point of novelty” test, characterizing it as a “version” of the ordinary observer test espoused. It noted, however, that those cases “are more properly read as applying a version of the ordinary observer test in which the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art.” The analysis now collapses into one test to determine if a design as a whole is substantially similar, taking into account the context of the prior art.

Egyptian Goddess also addressed whether trial courts should conduct claim construction in design patent cases. The CAFC cautioned that the trial court should "recognize the risks entailed" in detailed verbal description of the claimed design, "such as the risk of placing undue emphasis on particular features." Further, courts should not require "a detailed verbal description of the claim, as would typically be true in the case of utility patents." Concluding that although courts "have a duty to conduct claim construction in design patent cases," there is no required format, and indeed the drawing itself may be the best source of describing what is claimed.

Egyptian Goddess dealt only with infringement, but International Seaway (analyzed here) expanded the ordinary observer test to validity, as well. Recent cases have highlighted the difficulty in applying the ordinary observer test, as courts have struggled to clarify how an ordinary observer views the differences between a patented design and the accused product. In Crocs v. ITC, (analyzed here) the CAFC reiterated its caution against overly-detailed claim construction. In Richardson v. Stanley Works, (analyzed here) the court provided guidance on the ordinary observer’s view of functional elements in a design. The nuances of the ordinary observer test will likely provide fertile ground for subsequent decisions for some time to come.

Friday, April 23, 2010

Crocs Inc. v. International Trade Commission

(Fed. Cir. Feb. 24, 2010)
[Slip Opinion]

After Int’l Seaway Trading Corp. v. Walgreens (Ordinarily Observed here) was decided in December of last year, the Federal Circuit may have thought their days of scrutinizing hole-ridden rubber slippers were behind them. Fortunately for design patents fans, they were mistaken. In Crocs v. ITC, the court was again called upon to review a decision involving the ubiquitous footwear.

The ITC’s Decision:

"In the matter of CERTAIN FOAM FOOTWEAR," Crocs had filed a complaint with the ITC under Section 337 of the Tariff Act, which prohibits the importation of articles that would infringe a patent currently being practiced domestically. Crocs alleged that 11 parties were infringing its design patent (U.S. Patent No. D517,789) for footwear.

[Note: Crocs also asserted a utility patent, which both the ITC and the Federal Circuit analyze. In the interest of brevity, I won’t be looking at that part of the decision here, nor the parts dealing with the technical prong of the "domestic industry" requirement of the Section 337.]

Disregarding Egyptian Goddess, the administrative judge crafted a detailed verbal claim construction based on the figures in the design patent, arriving at the following:

footwear having a foot opening with a strap that may or may not include any patterning, is attached to the body of the footwear by two round connectors, is of uniform width between the two round connectors, has a wrench-head like shape at the point of attachment, and extends to the heel of the shoe; with round holes on the roof of the upper placed in a systematic pattern; with trapezoid-shaped holes evenly spaced around the sidewall of the upper including the front portion; with a relatively flat sole (except for upward curvature in the toe and heel) that may or may not contain tread on the upper and lower portions of the sole, but if tread exists, does not cover the entire sole, and scalloped indentations that extend from the side of the sole in the middle portion that curve toward each other. (emphasis added).

Based on this claim construction, the judge found that none of the accused products infringed the Crocs patent. In the judge’s view, some of the accused products did not infringe because they did not include straps of uniform width extending to the heel of the shoe; others did not infringe because they did not include round holes in the upper.

Crocs sought review of the judge’s determination of non-infringement by the Commission itself, and on July 25, 2008, the Commission affirmed.

Crocs then appealed to the Court of Appeals for the Federal Circuit. After some of the defendants settled or otherwise left the case, accused products from five defendants remained.

The Federal Circuit decision:

A panel of the Federal Circuit wasted no time in kicking the ITC’s claim construction to the curb. Noting that it "has cautioned, and continues to caution" lower courts against relying on detailed verbal claim constructions of design patents, the court held the ITC decision up as a poster child of sorts: "[t]his case shows the dangers of reliance on a detailed verbal construction." As the court chided the ITC, "an illustration depicts a design better than it could be by any description."

The court pointed out that several elements of the claim construction were flat-out wrong. First, the patent did not disclose a strap "of uniform width." As can be seen in Figure 1 of the patent (reproduced above), the strap becomes wider at the heel. Second, as can be seen in Figure 4 (below), the holes around the sidewall are not "evenly spaced."

The court reiterated that the Ordinary Observer test should have been applied: "To show infringement under the proper test, an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design."

In other words, the proper approach is to simply compare the designs side-by-side while keeping the scope of the prior art in mind. Strangely, the opinion reproduces the designs in a manner that makes it nearly impossible to see any detail. Nonetheless, the court found that all of the designs "embody the overall effect of the `789 design in sufficient detail and clarity to cause market confusion. Thus, the accused products infringe the `789 patent."


There are a few noteworthy aspects of this decision. First is the Federal Circuit’s enthusiasm for discouraging the reliance on overly-detailed verbal descriptions of designs. It seems misdirected here. The issue is not that the claim construction was overly detailed; the fatal flaw with the ITC’s decision was that the finding of infringement was premised on a claim construction that was just plain wrong, at least with respect to the strap of uniform width and the evenly-spaced holes.

Furthermore, the court did not remark on other less-than-optimal phrases in the claim construction. How can a design feature be an element of a claim if it "may or may not" be present? What limitation does a "systematic pattern" of hole placement really add? It would be interesting to know how the ITC would have ruled had its claim construction been a bit more accurate and precise.

In my opinion, the court got at least part of the infringement analysis wrong. Compare, for example, the Crocs patent (left) with the accused "Effervescent" product (right):

The court found that the Effervescent product infringed the Crocs patent. But I think the oversized rectangular holes on the upper of the Effervescent product clearly avoid deception. Almost everything about the Crocs design is rounded, swooping, and curved. Even the court noted that fact:

[An] overall effect of the design is a visual theme of rounded curves and ellipses throughout the design, including the strap forming a sort of continuation of the sidewall of the base to create a visually continuous ring encircling the entire shoe. Other examples of rounded curves or ellipses in the design are the ellipses formed by the strap and the foot opening in the base.

I just don’t see how the court can find that the Effervescent product (with its large rectangular holes on the upper) is deceptively similar to the overall appearance of the Crocs design, which the court acknowledges is a "visual theme of rounded curves and ellipses" including small round holes on the upper.

Finally, if you looked up the section of the Tariff Act referenced by Judge Rader in the first sentence of the opinion, you may have noticed that it was repealed over 80 years ago. This is a typo. Section 337 was originally encoded at 19 U.S.C. § 337 (the section cited by Judge Rader), but that section was repealed, and Section 337 was amended to its current form and moved to 19 U.S.C. § 1337.

Tuesday, April 20, 2010

Interesting Designs

Presented for your consideration, this weeks foray into the bizarre, but entertaining, world of issued design patents.

Our first installment comes from Foxsemicon Integrated Technology who brings us a heartlight that ET would be proud of in D613,889.

Next up, Microsoft Corporation gives us their interpretation of the Three Musketeers in D613,758.

And finally for this week, James Miller provides us with an informational sign that I hope to never see in my neighborhood in D613,800.

Monday, April 19, 2010

Exempting Repair Parts from Infringement

Today's post is by Michael Mathaisel, a registered patent attorney here at Lando & Anastasi.
Congress is currently considering an amendment to the patent statutes which would carve out an exception from infringement of design patents for repair parts. The Access to Repair Parts Act, H.R. 3059, as it is currently worded, would exempt liability for making, selling or using any component product whose “sole purpose” is to repair another product “so as to restore [the latter’s] original appearance.” Auto manufacturers, including Ford Motor Co. of Dearborn, Mich., are arguing strenuously against adopting this provision because, in their view, it would open a Pandora’s box that will lead to the evisceration of design patents for repair parts, and subject unsuspecting consumers to “knock-offs” of inferior quality. On the other hand, members of the repair and insurance industries, including the Quality Parts Coalition and the National Association of Mutual Insurance Companies, among a growing roster of groups, believe the changes are necessary to promote competition, offer consumers more choices, and hold down prices. However, the merits of these arguments, and the benefits of the proposed legislation, are somewhat dubious.

The words “sole purpose” jump out of the proposed legislation as critical, yet unclear: how is the sole purpose of a repair part determined, if in fact there is only one purpose? If H.R. 3059 is passed in its current form, courts will surely be faced with construing this phrase.

It is clear that design patents only protect the appearance of a product, and not the product’s functional features. At times, however, it can be quite difficult to separate the ornamental aspects from the utilitarian ones. For example, the hood of an automobile performs a number of functions. Most obviously, it covers the engine compartment and contributes to the overall appearance of the vehicle. There is little doubt that these are ornamental attributes.

But the hood also serves other important roles: its design, in conjunction with the grille, lamps, fenders, windshield, and other parts, contributes to the aerodynamics and stability of the vehicle and directs fresh air to feed and cool the engine. These attributes in turn affect performance and fuel economy. The hood must provide adequate clearance for the engine, while not interfering with the driver’s view. The hood also serves several safety functions, including improving the crashworthiness of the vehicle. While certain visual aspects of the hood are merely there for looks, automotive designers have become quite adept at melding style with engineering. At times, the two may become indistinguishable, and, arguably, inseparable.

Could a replacement hood that is visually indistinguishable from a patented hood serve no purpose other than to restore the vehicle’s appearance? One could argue that the “sole purpose” of a certain replacement part is to restore the vehicle to a safe and operable condition, and that the appearance of the part is merely coincidental to its function. This is because the part may be but one component of a larger collection of parts all designed specifically to work in concert with each other. Indeed, the visual aspects of the repair part may actually be dictated by its operation as one proverbial cog in the machine, in which case its “sole purpose” is not visual, but rather critically functional. The hood example can be extended to include many other automotive repair parts: headlamps, door panels, trunk decks, spoilers, and so on. The same analogies also apply beyond the realm of auto repair.

Utility patents will continue to offer the appropriate protection for the functional aspects of any product, and should be sufficient to allay the concerns of the automakers when it comes to repair parts (at least those entitled to patent protection). Only when a repair part is made in a manner that does not infringe a utility patent, but does infringe a design patent for the “sole purpose” (whatever that means) of restoring the vehicle’s original appearance, is there potentially cause for concern by the automakers if the present bill is enacted. I suspect such cases will be few and far between.

Tuesday, April 13, 2010

Interesting Designs

Shown below are a number of design patents that recently issued. Design Patents can be found in almost any industry and are almost unlimited in application. Keeping with footwear, this design by Nike (D611,238) presents an interesting design choice.

Other readily recognizable designs include an exterior of a power drill by Black & Decker (D611,319) and a design for a navigation device assigned to Garmin (D611,365).

A little more unusual design comes in the form of a food product design (D609,876) by Kellogg.

These designs represent the smallest of samplings of issued designs that in the right circumstances can afford substantial protection.

Friday, April 9, 2010

Does Prior Art Matter?
In Richardson v. Stanley Works, Inc. the CAFC squandered an opportunity to reiterate and provide greater clarity to the Ordinary Observer test. Instead, the court supported and confirmed the district court’s decision, which, as articulated by the Appellant David Richardson, failed to perform a three-way comparison between the prior art, the patented design and the accused products as set forth by the court in Egyptian Goddess and confirmed in Int’l Seaway Trading Corp.

In Richardson, the district court separated the ornamental aspects from the functional aspects of Richardson’s claimed design and determined whether an ordinary observer, after discounting the functional elements of Richardson’s claimed design, would be deceived into thinking that the two products were the same.

Richardson’s Claimed Design

Stanley’s Product

The district court held that the overall visual effect of Stanley’s product was not substantially similar to Richardson’s claimed design without any substantive analysis of the prior art. Rather than taking the opportunity to remand the case and admonish the district court to follow the Ordinary Observer test, the CAFC attempted to square the district court’s skewed analysis.
It is clear that the district court did not compare the patented design to the prior art. Instead, the district court concluded that none of the prior art designs are as similar to Richardson’s as Stanley’s design. As a result, we are left to wonder what ornamental features associated with Richardson’s claimed design distinguish it from the prior art. With this void in the analysis, the CAFC attempts to clean up the mess by comparing seemingly random design features (which appear to be associated with functional elements) of Richardson’s claimed design to those of Stanley’s product. However, since the district court did not discuss the prior art in any meaningful way, we cannot be certain whether the design features selected by the CAFC are even relevant to determining whether the ordinary observer would find infringement.
This is a case in which the CAFC would have been better served by remanding the case back to the district court so that the prior art could have been considered and the tenets espoused in Egyptian Goddess followed.

Thursday, April 1, 2010

Protecting User Interfaces Using Design Patents

Software is rich with intellectual property rights and those seeking to protect the various aspects of a software product have several available options. Software functionality can be protected with utility patents. Software code and screen displays can be protected using copyrights. Logos, marks and other devices used to brand software can be protected as trademarks and service marks. In the midst of these options, use of design patents to protect computer-generated graphical displays may be easily overlooked. However, given the relatively low cost and quick prosecution cycle of design patent applications, some IP-savvy companies are turning to design patent to protect the most recognizable facets of their software products.

MPEP §1504.01(a) provides guidance as to some of the requirements that must be met for a design patent application targeting a computer-generated icon to issue as a patent. For instance, the application must be drawn to statutory subject matter as defined by 35 U.S.C. § 171 which, in the realm of computer-generated icons, requires that the icon be embodied in at least a portion of a computer screen. Also noteworthy is the fact that computer-generated icons that change appearance may also be subject to design patent protection, provided that the images and the process of changing between the images is properly supported in the application.

By adhering to these guidelines, several big-name companies have been able to acquire design patents covering much more than simple computer-generated icons. For example, D608366, owned by Apple Inc., is drawn toward a graphical user interface that appears to be directed toward display of contact information.

In another example, D606090, assigned to Microsoft Corporation, claims the ornamental design for a user interface that includes several elements including a magnifying glass icon, a box and star icon and a box and X icon.

As a final example, D603415, which is owned by Adobe Systems Incorporated, depicts what appears to be a user interface for displaying a particular document within a series of documents.

Pundits may argue that the protection enjoyed by a design patent is weaker than that afforded to its brother, the utility patent. But for those seeking to protect the particular look or distinctive elements of a user interface, design patents remain a viable, cost-effective complement to utility patents.

Upcoming Events

We here at The Ordinary Observer wanted to spread the word about a couple of design patent-related events to be held in the next few weeks that promise to be very interesting.

On Tuesday, April 6, the USPTO will host its Fourth Annual Design Day Open House and Conference. “Design Day 2010: The Art of Design” is a day-long program that will provide a forum for design practitioners from around the country to meet with USPTO officials and discuss the state of design patent examination. Similar to previous years, the afternoon session will focus on industry presentations and highlight the unique role that design patents play within various industry sectors. Recent case law will also be discussed. Events will be held from 8:00 until 4:30. The program is open to all and there is no fee. However, for planning purposes pre-registration is encouraged and can be done on-line at

Also, on Thursday, April 15 at 2:00pm ET, the IPO will host a webinar entitled “Design Patents: The Latest from the Federal Circuit.” The webinar will address Int’l Seaway Trading v. Walgreens [analyzed here], Croc v. ITC, and Richardson v. Stanley Works, three recent design patent decisions that issued from the Federal Circuit. The featured speakers will include Christopher V. Carani, of McAndrews, Held & Malloy, Ltd.; Robert S. Katz, of Banner & Witcoff, Ltd.; and Damian Porcari, of Ford Global Technologies LLC. Registration information for the webinar can be found here.