Monday, December 31, 2012

Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC – Prosecution History Estoppel in Design Patent Cases

As 2012 draws to a close, the Middle District of Florida has released a late Christmas present in the form of a new argument for litigants defending claims of design patent infringement.  On December 27, 2012, Judge John Antoon II issued his decision on motion for partial summary judgment of noninfringement in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, No. 6:12-cv-33, 2012 WL 6721060 (M.D. Fla. December 27, 2012).  In his decision, which appears to be a case of first impression, Judge Antoon applied prosecution history estoppel to limit the claims of Pacific Coast's design patent to its literal scope and concluded that Pacific Coast was estopped from claiming that Malibu’s accused product infringed the patent-in-suit.

In this case, Pacific Coast accused Malibu Boats of infringing U.S. Design Patent No. 555,070 for a “Marine Windshield.”  A figure from the ‘070 Patent appears below alongside an image of the accused Malibu product:

The ‘070 Patent and the Malibu windshield are arguably similar except for the vents that appear on the corners of the windshields.  The ‘070 Patent has four circular vents whereas the Malibu windshield has three rectangular vents.  Although some might argue that this difference, alone, should be sufficient to distinguish the design under the ordinary observer test, courts have noted that the ordinary observer test subsumes a doctrine of equivalents analysis.  See, e.g. Lee v. Dayton–Hudson Corp., 838 F.2d 1186, 1189–90 (Fed.Cir.1988); Minka Lighting, Inc. v. Craftmade Int'l, Inc., 93 Fed. Appx. 214, 217 (Fed. Cir. 2004).  Therefore, Malibu went one step further, arguing that Pacific Coast should be estopped from claiming infringement under the doctrine of equivalents.  

During prosecution of the ‘070 Patent, Pacific Coast had initially submitted twelve different versions of the underlying windshield design.  One of the initial embodiments claimed a marine windshield with a hatch and two oval or rectangular holes:

However, the PTO issued a restriction requirement to select which one of the five groups of designs Pacific Coast wished to prosecute.  The Examiner also noted that if Pacific Coast wished to contest the election requirement, it would need to show that the design groups in question were not distinct.  In response, Pacific Coast amended the application to delete the figures for the the non-elected designs and proceeded on the merits with respect to the figures that resulted in the ‘070 Patent.  Notably, Pacific Coast never prosecuted divisional applications based on the other embodiments, allowing them to be abandoned.  

Before the district court, Malibu argued that Pacific Coast’s election gave rise to prosecution history estoppel with regard to any windshields with less than four vent holes.  Malibu argued that under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Pacific Coast’s amendment and election constituted a narrowing amendment made for the purpose of patentability and that Pacific Coast had thereby relinquished any equivalent designs that incorporated fewer than four vent holes.  See 535 U.S. 722, 737 (2002) (“A patentee who narrows a claim as a condition for obtaining a patent disavows his claim to the broader subject matter.”).

Judge Antoon agreed with Malibu that Pacific Coast’s limiting amendment estopped their infringement contentions against Malibu.  Pacific Coast attempted to argue that the restriction requirement was merely administrative, and thus did not give rise to prosecution history estoppel, citing cases regarding restriction requirements in utility cases.  However, the Court found that restriction requirements in design cases were distinguishable because, although restriction requirements are discretionary in utility cases, they are mandatory in design cases where applications may not contain more than one inventive concept.  (citing  MPEP §§ 1504.05, 1502.01(D)).  

Finally, the Court concluded that Pacific Coast had failed to overcome the presumption in favor of a disclaimer of equivalents.  Pacific Coast attempted to argue that its limiting amendment had deleted figures with two vent holes, not three, as found in the accused product and that windshields with three vent holes was not within the scope relinquished by Pacific Coast’s amendment.  The Court dismissed this argument without clearly addressing it, stating only that “the accused design is still clearly within ‘the territory between the original claim and the amended claim.’”  2012 WL 6721060, at * 4 (quoting Festo, 535 U.S. at 740).

In any event, Pacific Coast is likely to be an important case for both patentee’s and defendants. Design patent applicants who fail to pursue alternative embodiments after an election requirement will now do so at their own peril. Failure to follow-up with a timely divisional application runs the risk of dedicating unclaimed embodiments to the public. Likewise, design patent defendants should be mindful of election requirements made on the patents-in-suit during prosecution. Any similarities between the accused product and any non-elected embodiments should be exploited. Like This Post

Friday, December 14, 2012

Design Patent Roundup – Week ending Dec. 14, 2012

A number of cases have been filed since our last roundup which we summarize below. Of particular interest this week is a case involving the now famous plaintiff Egyptian Goddess asserting another design patent for a nail buffer. As always, we will continue to monitor the dockets for these cases and provide any noteworthy updates.

Friday, December 7, 2012

Design Patent Roundup – Week Ending Dec. 7, 2012

There was moderate activity since our last roundup, with six new cases filed this week.  We will continue to monitor the dockets for these cases and provide any noteworthy updates.  Please take a look at the designs and products at issue after the jump and let us know what you think in the comments section.  

Solar Sun Rings, Inc. v. Polygroup, Ltd., et. al, No.  5:12-cv-02099 (C.D. Ca. Nov. 28, 2012).
Plaintiff Solar Sun Rings filed suit against Polygroup, alleging infringement of Solar’s U.S. Design Patent No. 579,570 for a “Floating Spa Cover.”  If Solar’s spa cover design looks familiar to you, that is because we previously posted about Solar’s case against Wal-Mart.  Polygroup allegedly manufactures the “Solar Pad” that stands accused in the case against Wal-Mart.  It is unclear why Solar chose to bring this case as a separate action. Compare the ‘570 Patent to the accused product, below:

The case has been assigned to Judge Gary A. Feess.  Solar is represented by the Law Offices of Sepehr Daghighian.  Polygroup has not yet entered an appearance. 

Design Ideas, Ltd. v. Bed, Bath & Beyond, Inc. et al, No. 3:12-cv-03327 (C.D. Ill. Nov. 30, 2012).
Design Ideas filed suit against Bed, Bath & Beyond, alleging infringement of Design Ideas’ U.S. Design Patent Nos. 436,239 for a “Mesh Cart;” 479,272 for a “Mesh Basket;” and 517,769 for a “Portion of a Rolling Cart.”  Design Ideas accuses Bed, Bath & Beyond’s “Slim Bath Storage Cart.”  Compare the ‘239 Patent to the accused product, below:

The case has been assigned to Judge Sue E. Myerscough.  Design Ideas is represented by the Saidman DesignLaw Group.  Bed, Bath & Beyond has not yet entered an appearance. 

R&J Manufacturing, Inc. v. B&G International, Inc., No. 1:12-cv-00874 (D. R.I. Nov. 30, 2012).
R&J filed suit against B&G, alleging infringement of two utility patents and R&J’s U.S. Design Patent No. 543,590 for a “Rotating Ati-Theft Tag.”  R&J accuses B&G’s “Swivel Tag.”  Compare the ‘590 Patent to the accused product as it appears in the complaint, below:

The case has been assigned to Judge Mary M. Lisi.  R&J is represented by t Jodi-Ann McLane.  B&G has not yet entered an appearance. 

Metric Products, Inc. v. C and A Marketing, Inc. et al, No. 2:12-cv-10201 (C.D. Ca. Nov. 29, 2012)
Metric Products, Inc. v. Mogo Products, LLC, No. 2:12-cv-10204 (C.D. Ca. Nov. 28, 2012)

Metric filed lawsuits against C and A, and Mogo Products, both alleging infringement of one utility patent and Metric’s U.S. Design Patent No. 478,342 for an “Eye Shade.”  Although a specific product was not identified in the complaints, compare the ‘432 Patent to a sleep mask offered by Mogo on the internet, below:

The case has been assigned to Judge Christina A. Snyder.  Metric is represented by Blakely Sokolof Taylor and Zafman.  Neither Mogo nor C and A has yet entered an appearance. 

Ashley Furniture Industries, Inc. v. Cosmos Furniture, Ltd., No. 1:12-cv-09654 (N.D. Ill. Dec. 4. 30, 2012).
Ashley filed suit against Cosmos, alleging infringement of thirteen of Ashley’s U.S. Design Patents for ornate bedroom sets.  Ashley does not identify the accused product in its complaint, but alleges that “After a reasonable opportunity for further investigation or discovery, it is likely that the evidence will show that Defendant has infringed and continues to infringe.”  It is unclear whether Ashley’s allegations are sufficient to state a claim of design patent infringement.  Below is an example of one of the designs that Ashley is asserting, U.S. Design Patent No. 518,660:

The case has not yet been assigned.  Ashley is represented by McAndrews Held & Malloy.  Cosmos has not yet entered an appearance. 

Laughing Rabbit, Inc. v. Stone, No. 2:12-cv-02108 (W.D. Wa. Dec. 4, 2012)
Laughing Rabbit filed suit against Stone, alleging infringement of Laughing Rabbit’s U.S. Design Patent No. 375,372 for a “Pocket Flashlight.”  Laughing Rabbit accuses a “Dots Microlight,” allegedly sold by Mr. Stone.  Notably, the ‘372 Patent issued on Nov. 5, 1996, and should have expired on Nov. 5, 2010.  Compare the ‘372 Patent to the “Dots Microlight,” as it appears on the internet:

 The case has not yet been assigned.  Laughing Rabbit is represented by Lowe Graham Jones.  Stone has not yet entered an appearance.

Wednesday, December 5, 2012

Patent Law Treaties Implementation Act of 2012- Design Patent Protection Extended to 15 Years

The S. 3486 Bill, titled the “Patent Law Treaties Implementation Act of 2012,” which would implement the provisions of the Hague Agreement and the Patent Law Treaty, has passed the House by voice vote earlier today.  The Hague Agreement aims to streamline procedures for obtaining design patent protection in member countries.  A summary and a copy of the Bill are available here.

The Hague Agreement allows an individual to apply for Industrial Design protection in all countries participating in the Agreement using a single application.  Similar to utility applications, applications for design protection will be reviewed by the World Intellectual Property Organization (WIPO).  The bill also adds a new chapter to 35 U.S.C. on “international design applications,” specifying the regulations for filing the industrial design applications and determining priority dates based on foreign filing.  One of most noteworthy provisions is the change to the term of a design patent from 14 to 15 years from the date of grant. 

The Bill has been a long time in the making: the Hague agreement was signed over 12 years ago, and the Bill was ratified by the U.S. Senate in 2007.  The Bill now moves on to the White House for signature.  If signed, the provisions of the Bill shall take effect 1 year after the date of the enactment.  As always, we will continue to monitor and provide any meaningful updates.

Tuesday, November 27, 2012

Federal Circuit Alert – Revision Military, Inc. v. Balboa Mfg. Co. No. 2011-1628

The Federal Circuit released its decision in the design patent case of Revision Military, Inc. v. Balboa Mfg. Co. today, and the decision provides interesting insight into the Federal Circuit’s current mood regarding design patents.  

Revision Military is an appeal from a decision of the District of Vermont’s decision denying the plaintiff’s request for a preliminary injunction in a design patent case.  In this case, Revision alleges that Balboa’s new “Bravo” design protective goggles were copied from Revision’s “Bullet Ant” goggles which is covered by U.S. Design Patents No. 537,098 and No. 620,039 (the ’039 patent):

The Federal Circuit’s decision focuses primarily on the standard for a preliminary injunction in patent cases, generally, and is not unique to design patent law.  The primary holding of the case was that the District of Vermont incorrectly applied the Second Circuit’s heightened standard of “clear” or “substantial” likelihood of success on the merits.  The court explained that a preliminary injunction enjoining patent infringement pursuant to 35 U.S.C. §283 “involves substantive matters unique to patent law and, therefore, is governed by the law of this court.” (citation omitted).  Therefore, the case was remanded to the District of Vermont to apply the Federal Circuit’s “more likely than not” standard.

However, the Federal Circuit also took the opportunity to provide some noteworthy dicta on the subject of design patent infringement.  The court noted that “[a]lthough the district court stated the correct ‘overall design’ standard [for infringement], the court focused on features that ‘stand out as dissimilar,’ reciting the shape and sizes of the lenses, the concavity of the nose bridge, and the venting along the top and bottoms.”  The Federal Circuit stopped short of saying that the district court’s infringement analysis was in error though.  However, the court warned that “[a]lthough individual features may indeed serve in assessing the ‘impact on the overall appearance,’ … in determining whether apparently minor differences between specific features would be recognized as distinguishing the designs, it is often helpful to refer to any prior art with which the ordinary observer would reasonably be familiar.”  The Federal Circuit then remanded the case to the district court with a friendly suggestion to perhaps consider the prior art.  

Although the district court’s likelihood of infringement analysis was not central to the appeal, the Federal Circuit took this opportunity to remind district courts (and perhaps design patent practitioners) of the importance of context when determining design patent infringement.  Normally, substantial similarity should not be determined in a vacuum, and relevant prior art can inform the trier of fact as to the relative breadth of design patent claims.  Furthermore, consideration of prior art does not necessarily mean a narrower scope of protection.  Where a design is clearly unique within its field, it may be entitled to broader protection.  Thus, Revision Military may signal the Federal Circuit’s intention to create a more rigid framework for design patent infringement analysis, including consideration of prior art. 

We will continue to monitor this case and provide any meaningful updates.  A full copy of the Federal Circuit's decision can be found here.

Monday, November 26, 2012

Lululemon v. Calvin Klein Yoga-Pants Suit Dismissed

In our prior post we discussed the yoga-apparel maker Lululemon Athletica Inc.’s suit against Calvin Klein for design patent infringement.  Last week Lululemon filed a voluntary dismissal of the case against both Calvin Klein and its manufacturer.  The Wall Street Journal reports that the parties agreed to settle the patent suit, though the parties kept the details of the deal confidential.  The case was dismissed within two months of filing the complaint, without Lululemon ever serving it. 

Such a quick resolution of this infringement action is another testament to the strength of the design patent in the intellectual property arsenal as a stand-alone protection mechanism.  In the fashion industry, which is particularly vulnerable to copying by others, design patents can effectively prevent other companies from entering the market.  

Friday, November 16, 2012

Design Patent Roundup – Week ending Nov. 16, 2012

We are catching up on two weeks of design patent filings today, so there are several new cases.  As always, we will continue to monitor the dockets for the below cases and provide any noteworthy updates.  Please take a look at the designs and products at issue after the jump and let us know what you think in the comments section. 

Friday, November 9, 2012

K-Tec, Inc. v. Vita-Mix Corp - design patents as prior art

In our previous posts we discussed using design patents as prior art against utility patent applications, with the caveat that the drawings in design patents may not sufficiently disclose the structure or the function of all the elements in the claimed invention. In a recent case of K-Tec, Inc. v. Vita-Mix Corp., the Federal Circuit affirmed the finding that two design patents used in an obviousness analysis were non-analogous art to the utility patent claims and that the asserted claims were not proved invalid. 

K-TEC, a company that manufactures and sells commercial blending equipment, owns U.S. Patents 6,979,117 (“the ’117 patent”) and 7,281,842 (“the ’842 patent”), covering blending jars with specific geometries. The specific geometry is claimed as “a fifth truncated wall disposed between two of the four side walls” and is illustrated below. As a result of this geometry, a vortex is created when blending liquid inside the container moves away from a central axis and toward the truncated wall. The shifted vortex creates a flow pattern that causes the liquid to ascend the corner opposite the truncated wall and to descend at the truncated wall during blending.

The trial court granted K-TEC’s motion for summary judgment that the Vita-Mix container infringed the asserted claims and partially granted K-TEC’s motion that the asserted claims were not invalid. In the invalidity analysis, the trial court found that two prior art design patent references to pitchers, Hobbs (U.S. Design Patent 163,117) and Grimes (U.S. Design Patent 227,535) were non-analogous art. Both of the Hobbs and Grimes relate to ornamental designs for pitchers having a truncated wall that cuts off one corner of otherwise square-shapes. On appeal to the Federal Circuit, among other issues, Vita-Mix argued that the district court erred in granting summary judgment that Grimes and Hobbs are not analogous art.

The Federal Circuit explained that for the reference to be “analogous art,” the reference must satisfy one of the following conditions:
(1) the reference must be from the same field of endeavor; or
(2) the reference must be reasonably pertinent to the particular problem with which the inventor is involved.  A reference is reasonably pertinent if it, as a result of its subject matter, “logically would have commended itself to an inventor’s attention in considering his problem.” 

As stated in the specification of the asserted patents, there are four prior art problems that the invention solves: blender speed, safety, cavitation, and the blender’s ability to blend frozen ingredients. In addition, the inventor testified that he sought to create a blending jar that would reduce or prevent cavitation when blending frozen drinks.

Vita-mix argued under the second prong of the test, that the Grimes and Hobbs references were reasonably pertinent to the particular problem with which the inventor is involved. Vita-Mix also noted that during the USPTO reexamination of the ’117 patent, the Board held that both Hobbs and Grimes were analogous art. K-Tec argued that the ornamental designs of the Grimes and Hobbs pitchers “had no bearing on the inventor’s cavitation problem,” which was unique to blenders. K-Tec also noted that the size of the container was not a “problem” in the prior art.

The Federal Circuit agreed with the district court that the design patent references were non-analogous art, finding that Vita-Mix did not “explain any rational underpinning for [the inventor] to have consulted non-blending containers or food mixers in order to solve the problems he encountered in designing a new blending container.” The Federal Circuit also found that the Board’s decision that both Hobbs and Grimes were analogous art did “not raise a genuine issue of material fact,” because the Board’s opinion did not issue until well after the district court entered final judgment.

This case elucidates another caveat when design patents are used as prior art. The drawings in design patents are predisposed to be silent as to the particular problem the design patent was trying to solve and probably are entirely unhelpful in reciting a field of endeavor associated with the design. The lack of description in design patents may further limit a practitioner in arguing against obviousness rejections by an examiner during prosecution or in asserting an invalidity defense based on obviousness. For example, arguments that a design patent teaches away from the claimed subject matter or fails to establish that there is a teaching, suggestion, or motivation to combine multiple references would be very unlikely.

Wednesday, November 7, 2012

Solar Sun Rings, Inc. v. Wal-Mart Stores, Inc. – Motion for Summary Judgment of No Infringement Denied

Last week, the Central District of California rendered a decision on Wal-Mart’s Motion for Summary Judgment of No Infringement in Solar Sun Rings, Inc. v. Wal-Mart Stores, Inc., No. 11-cv-6990, 2012 WL 5379144 (C.D. Cal. October 31, 2012).  The case involves Solar Sun Ring’s (“SSR”) U.S. Design Patent No. 579,570, which is drawn to a “Floating Spa Cover” used to heat the water in a swimming pool.  Below is a comparison of the figures of the ’570 Patent and the accused product, Wal-Mart’s “Solar Pad”:

Judge Gutierez began his decision by construing the ‘570 Patent to cover “the illustrations that are contained in the ‘570 Patent.”  Id. at *3 (citing  Egyptian Goddess, 543 F.3d at 679).  As stated in our previous posts, this is the majority approach to claim construction where there is no immediate issue of functionality within the design. 

With regard to infringement, the Court addressed the level of examination required in design patent infringement analysis.  Wal-Mart made three distinctions between the ‘570 Patent and the Solar Pad.  First, the Solar Pad does not have 57 square quilted “pillows.”  Second, the ‘570 Patent lacks the gusset found in the Solar Pad.  Third, the ‘570 Patent has a differently proportioned ring than the ‘570 Patent.  Id.  at *4.  SSR countered that “comparisons of ‘similarities in the overall design, not of similarities in ornamental features considered in isolation ... should determine whether there has been infringement.’”  (quoting Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006))

Judge Gutierez agreed with SSR, and stated that “it is important to recognize that the inquiry is not whether the Accused Product and design have ‘slight variances in configuration.’  Rather, the question is whether the two designs look substantially the same to the observer's eye.   Furthermore, ‘minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement.’” Id. (citations omitted).  Based on this standard, the Court denied Wal-Mart’s motion.

SSR v. Wal-Mart, is a reminder that the standards for infringement and anticipation for design patents, although theoretically identical, are applied differently by the Patent Office and Federal Court.  As other commentators have noted, the PTO typically does not apply a rigorous anticipation and non-obviousness analysis to design patent applications.  Design patents with only minor distinctions from prior art sometimes have a good chance of being allowed.  However, as in SSR v. Wal-Mart, Courts appear willing to give design patents a somewhat broader scope during an infringement analysis.

Although these divergent standards can result in unfairness to unsuspecting defendants, it could be made to work to their advantage as well.  By consistently seeking design patents for their new products, Defendants can develop a record regarding the novelty of their products, and potentially create a viable counterclaim in any future design patent lawsuits.  Thus, a good design patent portfolio should be thought of as a potential shield as well as a sword.