Wednesday, January 30, 2013

The Design Patent/Copyright Conundrum ~ Roundtable Lunch Seminar

On Thursday January 24th, we attended The Design Patent/Copyright Conundrum Roundtable Seminar organized by the Copyright Committee of Boston Patent Law Association (BPLA), where Keith Toms and Erik Paul Belt from McCarter & English presented on the differences in protection afforded by design patents, trade dress, and copyrights.  Various topics were discussed including overlap in protections (see chart below) and recent cases such as Richardson v. Stanley Works and Apple v. Samsung.

 The seminar was well attended by the area’s intellectual properly practitioners, leaving no room at the table.  Presenters inspired lively discussions among the participants on such topics as the scope of protection of Apple design patents and role of design patents in emerging issues such as 3D printing technologies.  Presenters were gracious enough to allow us to share some of the presentation slides with you. Of particular interest is this comparison chart organizing the scope of protection afforded by design patents, copyright and trade dress.

As one might expect, much of the discussion centered around Apple v. Samsung and the forthcoming appeal.  In particular, there was a great deal of discussion regarding Apple’s Design Patent No. 604,305 for a “Graphical User Interface for a Display Screen or Portion Thereof.”   Based on the discussion, it was clear that the design patent community is eagerly anticipating the Federal Circuit’s discussion with regard to this particular patent.  

We thoroughly enjoyed the presentation and the discussion and would like to thank the presenters and organizers for putting together such a relevant and engaging seminar. 

Monday, January 28, 2013

Federal Circuit Alert – Hall, et al. v. Bed Bath & Beyond, Inc., No. 2011-1165, -1235

On Friday, January 25, the Federal Circuit issued its decision in Hall, et al. v. Bed Bath & Beyond, Inc., --- F.3d ----, 2013 WL 276080 (Fed. Cir. 2013), reversing the decision of the Southern District of New York, dismissing the case.  In this case, Hall is asserting its Design Patent No. 596,439 for a “Tote Towel.”  Below is a figure from the ‘439 Patent alongside a comparison provided in Hall’s complaint:

Interestingly, Hall appealed the decision of the district court despite the fact that Judge Hellerstein granted Hall leave to amend.   Judge Lourie’s dissenting opinion focuses on that fact and proposes penalizing Hall for declining the opportunity to amend.  Nevertheless, the Federal Circuit’s decision to reverse appears to be the correct decision.  
At the district court, Bed Bath & Beyond argued that Hall’s complaint failed to include factual allegations plausibly suggesting that the accused products infringed the ‘439 Patent under the Supreme Court’s decisions in Ashcroft v. Iqbal and Bell Atl. Corp. v. Twombley.  Specifically, the defendants argued that the complaint was insufficient because it failed to include any allegations relating to how the ‘439 Patent should be construed.  Evidently, Judge Hellerstein agreed and held that the complaint should have included answers to questions such as: “What is it  about Plaintiff’s towel that he claims is ‘new, original and ornamental,’ meriting the protection of a design patent?”    

The Federal Circuit began its analysis by citing its pre-Iqbal and Twombley decision regarding the pleading requirements in a design patent case - Phonometrics, Inc. v. Hospitality Franchise Systems, Inc.,  203 F.3d 790 (Fed. Cir. 2000).  There, the Federal Circuit held that the pleading requirement in design patent cases is no different than in a utility patent case.  All that is required are the basic elements of Form 18 – “(i) allege ownership of the patent, (ii) name each defendant, (iii) cite the patent that is allegedly infringed, (iv) state the means by which the defendant allegedly infringes, and (v) point to the sections of the patent law invoked.”  As with complaints in utility patent cases, Iqbal and Twombley did not alter this basic requirement. 

The Court then went on to explain that Hall’s complaint was adequate.  The Court reasoned that “Hall’s  complaint identified the patent, showed the patented design, and described the accused towel as follows: ‘¶27.  The Counterfeit Towel is virtually identical in design to the Tote Towel.  It  [has]  the same shape and almost the same dimensions -- 50” x 9.”  The Counterfeit Towel also features the Tote Towel’s unique zippered compartments and hanging loop.  In fact, the inseam of the Counterfeit Towel, from one pocket to the other, is exactly the same length as that of the Tote Towel.”  Notably, the images in Hall’s Complaint also appear to support a plausible claim of infringement at first blush. 

While Hall v. Bed Bath & Beyond, is not a watershed decision, it may be interpreted by some as altering the pleading requirements for an allegation of design patent infringement or as holding that Iqbal and Twombley had no impact on the pleading requirements for design patent infringement.  However, in the author’s opinion, Hall should be understood as an isolated situation where the complaint clearly made a plausible allegation and should not have been dismissed.  However, this case should not be construed as precluding a Rule 12(b)(6) dismissal, where the design at issue and the accused product (if shown in the complaint), clearly show an implausible (or frivolous) claim for design patent infringement. 

Friday, January 25, 2013

Design Patent Roundup – Week Ending January 25, 2013

This week brings us three new design patent cases, two of which concern design patents for apparel.  The first case deals with a design patent for a shapewear garment designed to remedy so-called “bingo arms.”  Although such garments may have functional aspects, prior shapewear design patent cases have yielded surprising results.  See, e.g., Maidenform v. Yummie Tummie.  The second deals with apparel of the K-9 variety and pits one dog collar maker against another.  

Place your bets after the jump!

Wednesday, January 23, 2013

Apparently Wah Hung Did Not Reinvent the Wheel

On January 17, 2013, District Judge Ronald S.W. Lew issued two opinions in Wah Hung, Int’l Machinery, Inc., et al. v. Valley Custom Tire, Inc., et al., No. 11-cv-4178 (C.D. Cal.).  In this lawsuit, Wah Hung was asserting its Design Patent Nos. 617,720; 620,425; 620,867; 639,220; each of which was titled “Front Face of a Vehicle Wheel.”  Below is a representative figure from the ‘720 Patent:

Read our case summery after the jump. 

Tuesday, January 22, 2013

Design Patent Links - January 22, 2013

Image courtesy of digitalart /
There has been a great deal of design patent commentary in the last week despite an apparent slow-down in new design patent cases.  Here's the latest analysis from the best and brightest in design patent law:

As we noted in our design patent roundup last week, it looks like new design patent complaints may be tapering off.  Some other commentators have noticed this overall trend as well.  Lisa Schuchman, of ALM's Corporate Counsel website has provided a thorough discussion of why design patent suits are becoming less prevalent.  The analysis is based on data provided by Robert Walters, a partner at McDermott Will & Emory, showing a significant decline in new design patent cases in E.D. Tex, N.D. Cal., D. Del., and the ITC.

Despite the apparent decline in new lawsuits, however, it is clear that design patents remain a cost-effective form of intellectual property.  Dennis Crouch of Patently-O recently posted data from the USPTO showing that most design patents are issued in approximately 12 months.

In addition, there are some indications that the fashion industry is becoming more aware of the usefulness of design patents. The fashion law blog, The Sole PurseSuit, recently discussed the effect of the Lululemon design patent suit on the fashion industry and suggested some fashionable designs that might be considered for design patent protection, including "the Louboutin Bow."

Unlike the fashion industry, Silicon Valley has long understood the value of a robust design patent portfolio.  Often times, monitoring the design patents granted to tech giants can give clues about the next generation of tech gadgets.  For example, Patent Bolt recently discussed a mysterious design patent recently granted to HP on a next generation docking station.  Although HP's Design Patent No. 673,391 raises more questions than answers, it will be interesting to see what HP intends to dock with this device in the near future.

Lastly, for those who follow Apple's design patent portfolio, several blogs, including TechSpot, noted Apple's new design patent on its popular trackpad design.  Over the years, Apple has shown an impressive ability to successfully prosecute relatively simple design patents for its unique devices.  This particular design patent is drawn to the rectangular trackpad used on many laptops, including Apple's line of MacBook products.  Several other blogs discussed Apple's new Design Patent No. 674,382, including The Verge, and TUAW.

Friday, January 18, 2013

Design Patent Roundup – Week Ending January 18, 2013

This was a slow week for new design patent cases, which may signal a slow-down in new complaints.  We will see in the coming weeks whether this trend continues or whether it is an anomaly of the holiday season.  Also, we have added a polling feature this week so please share your opinion on infringement vs. noninfringement!

Monday, January 14, 2013

Design Patent Links – January 14, 2013

Christopher Carani of McAndrews, Held & Malloy wrote an excellent analysis of Apple’s smartphone litigation with Samsung and several other design patent cases in an effort to discern some overall guidelines for assessing design patent infringement under the ordinary observer test.  Mr. Carani’s article was re-posted by permission on Patently-O.

Speaking of Apple v. Samsung, the German version of their ongoing design patent war will be delayed after some fancy footwork by Samsung in the EU Trademark Office in Alicante, Spain, as reported by Bloomberg.

Stephen L. Peterson of Finnegan, Henderson, recently penned an article on discussing several myths about design patent, including the misguided theory that “Design patents can’t protect fashion.”

IP360 recently posted an article discussing the “Benefits of US Implementation of the Hague Agreement” and the effect on international design patent prosecution. (account required).   Several other commentators recently discussed the ratification of the Hague Agreement as well, including JDSupra , Tom’s Hardware, and Bloomberg Businessweek.

Foss Patents is reporting on an anonymous ex parte reexamination of Apple’s design patent covering a page turning animation.  Apple’s page turning design patents were subject to widespread criticism when they first issued in light of traditional books and the breadth of the patents.  We will monitor this reexamination and update as warranted.

For those who live in the Boston area, the Boston Patent Law Association will be hosting a roundtable lunch seminar on “The Design Patent/Copyright Conundrum” on January 24, 2013 at Bingham McCutchen.  The roundtable will include discussion of the nature and scope of protection afforded by design patents and copyrights, the overlap in protection between the two, standards for infringement, and remedies available for infringement of design patents and copyrights. 

Tuesday, January 8, 2013

The Point of Novelty Test – An Offence Now Punishable By Death

It appears as though Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC is the design patent case that keeps on giving.  We previously posted about Judge Antoon’s finding no infringement in this case, and Malibu Boats’ creative use of prosecution history estoppel.  On January 4, another interesting decision came down in Pacific Coast, this time relating to the exclusion of an expert witness who somehow applied a design patent standard that has been dead-letter law for more than four years.