Monday, April 29, 2013

Design Patent Links

Stanford’s Design Patents in the Modern World conference earlier this month seems to have generated a good deal of design patent buzz across the internet. This wave of interested has continued through the end of April, with several new developments in the area of designs. Below is a sampling of some of the design patent stories from the last week.

For those who weren’t able to attend, the organizers have been good enough to post video from this month’s Design Patents in the Modern World Conference at Stanford Law School. We have provided a link to the first of several videos covering the conference.

On April 23, 2013, the American Intellectual Property Law Association, the Intellectual Property Owners Association, the American Bar Association Section of Intellectual Property Law and the Industrial Designers Society of America hosted its annual Design Day conference with the USPTO. The seminar included a discussion of the written description requirement in the wake of In re Owens. If any of our readers attended the conference, we would be interested in hearing from you.

IP 360 is reporting on the first inter partes review in a design patent case, which was initiated by the PTO last week. The decision to grant this review review is notable, if for no other reason, because of the dearth of citable authority from the PTO relating to design patent law.

Patently-O posted an interesting article on Multiplicity of Design Patent Rights, covering some of the more sophisticated design patenting techniques practiced by design-patent savvy applicants.

PatentBytes commented on California Institute of Technology’s new design patent for the descent stage of the Mars rover. But one wonders whether the Mars rover is the proper subject for a design patent if nobody actually sees it during its normal, intended use.

The Daily record posted an article providing an update on USPTO regulations implementing the portions of the Hague Agreement concerning international design patent applications. While the PTO continues to mull over its international design patent regulations, Lexology reports on how to prepare a combined U.S. and international design patent application

Collision Repair Magazine commented on the PARTS Act, which is currently making its way through Congress. This bill would reduce the term for design patents covering car parts from 14 years to 30 months. It is unclear why the authors of the bill consider car parts to be a special case or whether the United States would even be able to carve out the term for certain design patents without running afoul of its international commitments on design patent law. IPO Daily also reported on the PARTS Act. Here is a link to the current version of the bill.

Saturday, April 27, 2013

Design Patent Roundup

After a short hiatus, we are back with this week’s design patent roundup. In honor of this springtime weather here in Boston, we begin the roundup with a case about swimming pool chairs. As always, we will keep you posted of any interesting developments in these cases.

Friday, April 26, 2013

Advanced Design Patenting Techniques – Part II

In our last post we discussed a number of advanced design patenting techniques used to broaden the scope protection afforded by a design patent.  Using examples from granted patents we discussed continuation application practice, claiming features not immediately separable, and including multiple embodiments in one application.  This week we continue our discussion with a number of additional techniques. 

Friday, April 12, 2013

Advanced Design Patenting Techniques – Part I

The days of treating design patent applications as unsophisticated and easily drafted alternatives to utility applications may be at an end.  More and more patent practitioners are recognizing the power of design patent applications and particularly how mastering advanced design patent techniques can provide broader protection.  If you have any reservations about using such advanced techniques, let us assure you that design patent giants the likes of Apple and Google have been doing it for years and with great success.  We outline a number of advanced techniques using granted patents from these heavy weights. 

Monday, April 8, 2013

Design Patent Links

The biggest design patent news from the last week was clearly Stanford Law School’s Design Patents in the Modern World conference, which was held last Friday and Saturday.  If you thought the popularity of design patents was being exaggerated lately, please see the below photograph from the event, courtesy of Mark Lemley, via Twitter:

Wednesday, April 3, 2013

Hire Order Loses Bid for Summary Judgment of No Design Patent Infringement Against Oakley

Last Thursday, an interesting decision came down in the design patent case of Oakley, Inc. v. Hire Order, Ltd, et al., No.  3:12-cv-02346 (S.D. Ca.).  This case concerns Oakley’s U.S. Design Patent No. 523,461, titled “Eyeglass Component.”  Oakley accuses defendants Hire Order, Ltd., Global One Sales, and Distribution Sportsman Eyewear, LLC (“Hire”) of infringing the ‘461 Patent by selling their “Sportsman Eyewear” brand.  Below is a figure from the ‘461 Patent alongside an image of Hire’s Sportsman Eyewear glasses.

Both Oakley’s patented glasses and the Sportsman’s Eyewear glasses are designed to allow the wearer to capture video of whatever he or she views.  

Oakley filed its complaint against Hire on September 26, 2012.  Hire Answered on December 11, 2012 and then quickly filed a motion for summary judgment of no infringement, which was the subject of the Court’s March 28 order.  While motions for summary judgment are usually filed long after the pleadings stage has ended in utility cases, an early motion for summary judgment can be an effective tool in design patent cases.  Although the ordinary observer test is a fact-intensive analysis, there are typically only two relevant facts for consideration – the appearance of the accused product and the figures of the design patent at issue.  Where the designs are not arguably deceptive, summary judgment of non-infringement may be appropriate on these two facts alone.  Furthermore, if an image of the accused product is attached to the complaint, defendants may even move to dismiss the complaint with prejudice.  In the context of design patents, there are few cases that would be ripe for summary judgment of no-infringement but would at the same time clear the “plausibility” hurdle of the Supreme Court’s decisions in Iqbal and Twombley

In ruling on Hire’s motion, Judge Sabraw began with the familiar adage that non-infringement, “requires a two-step analysis. ‘First, the claim must be properly construed to determine its scope and meaning.  Second, the claim as properly construed must be compared to the accused device or process.’” citing Terlep v. Brinkmann Corp., 418 F.3d 1379, 1381 (Fed. Cir. 2005).  However, as is the modern trend with design patents, the Court resisted entering a verbal 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 claimed design.” quoting Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008).  “Instead, the Court agree[d] with Plaintiff that ‘the D461 Patent should be construed as the ornamental design for an eyeglass component, as shown and described in Figures 1 through 6 of the patent.”  

With regard to non-infringement, Hire pointed to differences the overall shape of the arms and nose bridge of the ‘461 Patent versus the Sportsman glasses.  Hire also asserted that the Sportsman glasses have smooth arms while the arms on the ‘461 Patent are ribbed.  Hire also pointed to the fact that the buttons on its glasses have a different shape and less numerous.  

Oakley acknowledged these differences between the ‘461 Patent and the Sportsman glasses, but argued that “when the products are viewed as a whole, there is an ‘overwhelming similarity,” between it and the claimed design, or at a minimum, a question of fact.”  The court agreed with Oakley’s assessment, citing Egyptian Goddess, and reasoning that “‘mere difference of lines in the drawing or sketch ... or slight variances in configuration ... will not destroy the substantial identity.’”  Egyptian Goddess, 543 F.3d at 670 (quoting Gorham, 81 U.S. at 526-27).

Judge Sabraw’s decision stands as a reminder of the breadth of modern design patents. The Federal Circuit’s decision in Egyptian Goddess, jettisoning the point of novelty test, and warning against detailed verbal claim construction, has allowed design patent cases to proceed further in litigations than previously possible. Early dismissal and/or summary judgment remains an important tool in a defendant’s arsenal, but judges now seem less and less willing to dispose of design patent cases unless it is a clear case of non-infringement.

Monday, April 1, 2013

Design Patent Links

Aside from the Federal Circuit’s decision in In re Owens, which we covered last week, it was a fairly quiet week in design patent law. However, this week promises to bring plenty of design patent news from Stanford’s Design Patents in the Modern World conference, which takes place on Friday and Saturday of this week. Here are the design patent links from the past week! 

According to the law firm of Smith & Hopen, USPTO hiring for design patent examiners has remained flat since 2008, whereas the number of examiners for utility patents has increased by 32% over that same period. This despite the fact that design applications rose by 14%. 

ComputerWorld noted the 13 design patents for the Microsoft surface that were recently issued by the PTO. Microsoft’s new design patents cover several aspects of the Surface, including its signature keyboard/covers.

Sarah Burstein, Associate Professor of Law at the University of Oklahoma, provided her analysis of In re Owens in a guest post on Patently-O.

Professor Burstein will be among several design patent scholars presenting at Stanford’s design patent conference, “Design Patents in the Modern World.” The conference is scheduled to take place this Friday and Saturday 4/5-4/6. Professor Andrew Torrance of the University of Kansas School of Law will also be presenting a paper co-authored by myself entitled “(R)evolution in Design Patent Subject Matter: The Shifting Meaning of ‘Article of Manufacture.’” The conference is open to the public. Any design patent enthusiasts planning to attend should register here.