Friday, October 26, 2012

Design Patent Roundup – Week ending Oct. 26, 2012

It was a busy week for design patent plaintiffs with five new cases filed since our last roundup. Take a look at the designs and accused products after the jump and let us know what you think in the comments section.  Has the ordinary observer test been satisfied?  As always, we will continue to monitor the dockets for the these cases and provide any noteworthy updates. 

Tuesday, October 23, 2012

Weekly Round Up of Design Patent Case filings – Week ending Oct. 20, 2012

CFM Consol., Inc. v. Specialty Auto Parts USA, Inc., No. 3:12-cv-05923 (W.D. Wa.) (Oct. 12, 2012)
Design Patent
On October 17, 2012, Flex-a-lite (part of CFM Consolidated, Inc.), maker of automotive cooling products, filed a complaint alleging infringement of its D532095 patent against Specialty Auto Parts USA, Inc. Flex-a-lite sells the Black Magic S-Blade fan that attaches to the vehicle radiator, which is supposed to lead to increased horsepower, torque and gas mileage over a traditional flat blade design.  The D532095 patent is directed to a combined fan assembly and shroud, shown on the right.  The Black Magic S-Blade fan product, made by Flex-a-lite is shown in below, and the allegedly infringing product is shown below on the right.  The case is pending in the Western District of Washington and has been assigned to Judge Ronald B. Leighton.  

The Black Magic S-Blade
Specialty Auto Parts

Aspen Med.Prods., Inc. v. Novitas Med., LLC, No. 2:12-cv-08733 (C.D. Cal.)  (Oct. 11, 2012)
On October 11, 2012, Aspen Medical Products, filed a complaint in the Central District of California, alleging infringement of its D636494 patent against Novitas Medical.  Aspen Medical Products makes and sells upper and lower spinal orthotics, and the D636494 is directed to a Lumbar belt.  According to the complaint, defendant’s  Sequoia products infringe the design covered by the D636494 design patent, shown below. We will continue to monitor the dockets for both of these cases and provide any interesting updates.

Monday, October 22, 2012

Designs Abroad – Being “Cool” Doesn’t Pay (Apple v. Samsung Continues)

In Europe, some new developments in the Apple Samsung feud have gone Samsung’s way.  On Thursday, a U.K. appeals court ruled that the Galaxy Tab 10.1 tablet (Samsung) does not infringe Apple’s design patent.

The U.K. appeals court went one step further, indicating that the decision should be binding throughout the European Union.  Interestingly, a German Court arrived at the opposite conclusion issuing a EU-wide injunction in an ex-parte procedure.  The U.K. appeals court took that decision to task indicating the German court’s reasoning was “sparse in the extreme.”*  Based on Community Design Procedure, the U.K. appeals court decision should dissolve the injunction.

The U.K. appeals Court further noted:
If the registered design has a scope as wide as Apple contends it would foreclose much of the market for tablet computers. Alterations in thickness, curvature of the sides, embellishment and so on would not escape its grasp. Legitimate competition by different designs would be stifled.*

Ultimately, the U.K. appeals court upheld the lower court’s decision of non infringement.  The lower court’s decision derived some notoriety for determining Samsung’s designs “are not as cool,” and thus, creating a different impression than Apple’s designs.  (Link, para. 190).

The war is far from over, but Samsung appears to have come away with a victory in this battle.  The ensuing forays by both Samsung and Apple will require close attention, as design protection and enforcement case law in the EU is simply not developed.  There is an opportunity, for better or worse, for Apple and Samsung to write the book on protection and enforcement of Community Designs in the EU. 

* Quote attributed by – full article available here.

Thursday, October 18, 2012

Foreshadowing - The Prosecution History of the First Generation iPad Design Patent

The big news this week is the design patent granted to Apple on its first generation iPad design (U.S. Design Pat. No. D669,069). The application for this design was filed on January 26, 2010, nearly three years ago. Unlike the design patent asserted against Samsung, this design patent features aspects of the first generation iPad design that include the home button, the docking port, the volume and mute buttons.

Looking at the prosecution history, Apple received its first notice of allowance for this patent in March of 2011. So why did it take so long to get this patent granted? Because Apple filed six separate Continued Prosecution Application requests, each time submitting a new Information Disclosure Statement (IDS). Did Apple intentionally delay the patent issuing? It is possible that Apple is gearing up to assert the patent and is making sure all the references are considered by the PTO. The list of references is quite extensive and includes exhibits from the Apple v. Samsung case.

Another interesting point to note in the prosecution history is the obviousness-type double patenting rejection received during prosecution. The doctrine of obviousness-type double patenting bars applicants from obtaining a second patent on an invention that is deemed to be an obvious variation of a claimed invention. The rejection was received over the co-pending application 29/353,311 in view of US Patent No. D602,017 and D451,505. The 29/353,311 application (now patent D637,596) discloses a more generic iPad design.

D602,017 discloses an iPhone design and D451,505 is directed to a portable computer made by Hitachi. In response to the rejection, Apple amended the drawings to the version that includes the contrasting shading on the screen seen above. All of these co-pending design applications on the iPad design could result in thin patent rights in each individual application, but the combination of these applications could provide Apple with a formidable weapon against against other tablet PC manufacturers.

Wednesday, October 17, 2012

Design Patent Claim Construction – A Picture Is Worth 1,000 Words

Since the Federal Circuit’s 2008 decision in Egyptian Goddess, one of the most difficult issues in design patent law surrounds the question of claim construction. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc). In Egyptian Goddess, the Federal Circuit famously did away with the old “point of novelty” test, returning the ordinary observer test to its rightful place as the sole test for design patent infringement (prior analysis here). However, in a less noted portion of the Egyptian Goddess decision, the Federal Circuit opined on the issue of claim construction, stating that “the preferable course ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description of the claim language.” Id.  The court reasoned that “a design is better represented by an illustration ‘than it could be by any description and a description would probably not be intelligible without the illustration.’”  Id. (quoting Dobson v. Dorman, 118 U.S. 10, 14 (1886)). 

The Federal Circuit lists three scenarios when a design patent claim construction might be helpful to a jury: 1) describing the role of particular conventions in design patent drafting, such as the role of broken lines; 2) assessing and describing the effect of any representations made in the course of the prosecution history; and 3) distinguishing between those features of the claimed design that are ornamental and those that are purely functional. Id. at 680 (citing OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed.Cir.1997) (“Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design”)). 

However, the majority of district courts have avoided a detailed verbal claim construction after Egyptian Goddess, opting instead to clarify design patent law through jury instructions instead.  See e.g. 180s, Inc. v. Gordini U.S.A., Inc., 699 F.Supp.2d 714 (D. Md. 2010) (construing design patent claims as “the figures included in the patent”); Dexas Int’l., Ltd. v. Office Max Inc., No. 6:07-cv-396, 2009 WL 252164, at *5 n.2 (E.D. Tex. Jan.30, 2009) (claim construction “would entail a significant risk that the jury would place undue emphasis on particular features of the claimed designs or otherwise focus on distinct features rather than on the designs as a whole”); DePaoli v. Daisy Manufacturing. Co., Inc., No. 07-cv-11778, 2009 WL 2145721, at *2 (D. Mass. July 14, 2009) (claim construction unduly risked overemphasizing specific design elements).  But see also Mag Inst., Inc. v. JS Prods., Inc., 595 F.Supp.2d 1102, 1108 (C.D. Cal. 2008) ("the Court, in the usual course of issuing a claim construction order, will construe the challenged claims to ‘identify the non-functional aspects of the design as shown in the patent.’”).

Recently, the District of Colorado joined the majority of district courts rejecting detailed verbal claim construction in design patent cases. In Yao-Hung Huang v. Marklyn Group, Inc., Huang accuses Marklyn of infringing U.S. Design Pat. No. 614,780 for a flexible attachment strip for attaching LEDs to the front grill or side mirrors of an automobile. See Yao-Hung Huang v. Marklyn Group, Inc., No. 11-cv-01765, 2012 WL 4856720 (D. Colo. Oct. 11, 2012). Marklyn proposed a detailed claim construction, including dimensions and ratios for the design. However, the court determined that a detailed verbal description would not be helpful to the jury, and therefore construed the claims as “[t]he ornamental design for a flexible attachment strip having a plurality of forward facing LEDs, as shown ad described.” Id. at *2. Notably, Judge Blackburn found that a detailed construction was not required to distinguish the ’780 patent from the prior art or to limit its scope to its non-functional elements. Instead, the court reserved those questions for a later date.

Naturally, defendants in design patent cases will prefer a detailed claim construction in order to focus discovery and position the case for summary judgment. But, defendants should be cautious not to seek more verbiage than would be helpful to a jury. Instead, defendants should narrowly tailor their proposed claim constructions to target one or two perceived weaknesses in the plaintiff’s case. Otherwise, federal judges are likely to opt out of claim construction altogether and reserve issues of functionality and prior art for summary judgment. 

Wednesday, October 10, 2012

Design Patent Remedies - It's Never Too Late to Change Your Mind

One of the trickiest questions for any plaintiff in a design patent case is which remedy to pursue. Unlike a utility patent, where only the plaintiff's damages are available under 35 U.S.C. § 284, a design patentee may instead elect to pursue the defendant's ill-gotten profits under 35 U.S.C. § 289. This special remedy for design patent infringement is what makes the oft-overlooked design patent such a powerful form of intellectual property. 

However, deciding which remedy to pursue is never simple. On the one hand, pursuing the plaintiff's damages allows the plaintiff to potentially treble its award in exceptional cases. On the other hand, by seeking to disgorge the defendant's profits, a plaintiff can streamline damages discovery, simplify the issues that are presented to the jury, and avoid additional litigation costs. Depending on the nature of the infringement and the profit margin for the accused product, either theory of recovery could yield a larger sum for the plaintiff. Thus, the decision to pursue damages or profits is rarely simple choice. 

Luckily, a plaintiff's decision to seek damages or profits is not set in stone. Recently, Judge Rudolph Randa held that Nordock was entitled to take discovery of Systems' profits despite never having requested the defendant's profits from infringement in its prayer for relief. See Nordock, Inc. v. Systems, Inc., No. 11–C–118, 2012 WL 4760784 (E.D. Wis. October 5, 2012). In Nordock, Systems, Inc. is accused of infringing U.S. Des. Pat. No. 579,754, for a lip and lug hinge plate for dock levelers. In its complaint, Nordock only requested damages for infringement under § 284. Nordock also failed to identify Systems' profits as a measure of damages in its initial disclosures. Systems Inc. therefore refused to produce any evidence of its profits. Systems Inc. argued that the requested information was irrelevant to Nordock's claims and the only articulated theory of damages. 

Ruling on Nordock's motion to compel, Judge Randa held that evidence of Systems, Inc.'s profits were discoverable, even without first amending the complaint. Judge Randa reasoned that, under Rule 54(c), courts "should grant the relief to which each party is entitled, even if the party has not demanded that relief in its pleadings," unless such relief would prejudice the opposing party. Finding no prejudice to Systems, Inc., the court ordered that the records be produced and allowed Nordock's new theory of disgorged profits. 

The lesson from Nordock is simple. As a general rule, plaintiffs in design patent cases should request all available forms of relief, including disgorgement of profits under 35 U.S.C. § 289. However, a plaintiff may still be able discover evidence of the defendant's ill-gotten profits and assert a disgorgement theory if it acts quickly to gather the necessary evidence before trial.