Wednesday, October 30, 2013

Damages Experts Test the Court in Apple and Samsung Patent Dispute

Some of the interest in the long running patent dispute between Apple and Samsung has waned in the wake of the August, 2012 jury verdict awarding Apple more than one billion dollars in damages for Samsung’s infringement of a combination of utility patents, design patents and a assorted registered and unregistered trade dress. The case is ongoing, however, and new developments have occurred in the past few weeks.

Monday, October 28, 2013

Design Patent Links - Oct. 28, 2013

With all eyes on the world series, it was a slow week in design patent news. Unfortunately, I couldn’t find any world series-related design patents, but I did find this rather witty design for a “baseball fan…”

Lorri Cooper of Pearne & Gordon LLP has published an in-depth review of the PTO’s new design patent policy concerning dashed lines that was announced at the PTO’s Design Day 2013 by Joel Sincavage, the Design Practice Specialist of Technology Center 2900, the Patent Office. According to Ms. Cooper, design patent practitioners can protect future continuations in design patents by using the MPEP provision which allows for “a narrative description in the specification can supplement the drawing disclosure to define the scope of protection sought by the claim.” See MPEP § 1504.04. This language may point out specific features thought to be novel, and may pave the way for the future inclusion of additional dashed lines in continuations. In the wake of the Federal Circuit’s decision in In re Owens, this is precisely the type of approach which would support the written description requirement for future continuations and should be seriously considered by all design applicants. has penned an interesting article about the fact that Design Patents Are A Boon for the Fashion Industry. The articles highlights many of the unique advantages of design patents for the fashion industry, including the speed and secrecy with which a design patent application may be prosecuted before the PTO.

It was only a matter of time until design patents became a part of the medical marijuana debate. The Wall St. Journal is reporting that medical marijuana firm Cannabis Biotech, is enlisting the help of a patent attorney to seek design patent protection for a unique marijuana delivery device. Given the federal government’s stance on medicinal marijuana, it will be interesting to see how the USPTO treats an application specifically directed to marijuana delivery.

Gizbot (among others) is reporting on a unique design patent application filed by Samsung, which appears to show that Samsung is entering the smart glasses competition against Google Glass. Given that Samsung has been stung by design patents in the past, it makes sense for them to seek design patent protection of their own, and to make sure the PTO has considered prior art designs like Google Glass.

Friday, October 25, 2013

Design Patent Roundup - Oct. 25, 2013

With Halloween almost upon us, we bring you this week’s design patent roundup, which features a lawsuit relating to children’s pillows shaped like terrifying monsters. As always, we will continue to be on the lookout for key developments in any of the cases discussed below.

Wednesday, October 23, 2013

Obviousness Inquiry for Design Patents – The Answer Is Not So Obvious

["Author's" note: this post was authored by David Lu, of Lando & Anastasi, and is based on a discussion of High Point that he recently presented during a monthly Federal Circuit review. David's practice includes patent prosecution, opinion work, due diligence, and general intellectual property counseling in the areas of biochemistry, molecular biology, cell biology, immunology, microbiology, genetics, and genomics. David now dabbles in design patent law as well.]

In High Point Design LLC v. Buyer’s Direct, Inc., Case No. 12-1455 (Fed. Cir. September 11, 2013) the Federal Circuit addressed several interesting issues surrounding how invalidity under 35 U.S.C. § 103 should be determined for design patents.

First, the court addressed what should be the standard for assessing the potential obviousness of a design patent. The court asked whether obviousness should be determined from the vantage point of an “ordinary observer” or “an ordinary designer” in the art? The Federal Circuit held that an “ordinary designer” standard is required in an obviousness analysis relating to a design patent and the use of an “ordinary observer” test would run contrary to the court’s precedent. Interestingly, in International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) the Federal Circuit ruled that the ordinary observer test is the sole test for anticipation of design patents. Here, the court did not say that the decision in International Seaway reached a contrary conclusion. Rather, the court suggested that the International Seaway court might in fact have had the designer of ordinary skill standard in mind when it used the term “ordinary observer.” After all, the ultimate inquiry is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.

It is unclear whether the ordinary designer test would make it easier or more difficult to invalidate a design patent or render it obvious. However, expert opinions will likely play a more important role in future battles for obviousness. Indeed, the court noted that a valid expert opinion cannot be disregarded just because an expert is an ordinary designer and not an ordinary observer.

The second issue the Federal Circuit addressed relates to claim construction in design patent cases. To evaluate the potential obviousness of a design patent, a fact finder must first find a single reference that teaches the design characteristics that are basically the same as the claimed design. In order to do that, a court must first discern the correct visual impression created by the patented design as a whole. The Federal Circuit relied on Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996), ruling that the district court erred by failing to translate the patented design into a verbal description. In particular, the court stated that the district court should add sufficient detail to its verbal description of the claimed design to evoke a visual image consonant with that design. Interestingly, in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) the Federal Circuit abolished the requirement for detailed verbal claim construction in design patent infringement cases. In fact, the Federal Circuit preferred that district courts not construe the claimed design with a detailed verbal description. The Egyptian Goddess court seemed to suggest that a different requirement should be in place for invalidity cases. However, the court in High Point did not clarify this distinction, nor provide guidance on what would constitute the “sufficient detail” in order to evoke the visual image necessary for obviousness analysis.

Further confusing the issue is whether High Point is even controlling on the issue of claim construction, given that Egyptian Goddess cautioned against verbal claim construction of design patents and was decided en banc.

Monday, October 21, 2013

Design Patent Links - October 21, 2013

This week brings us news of the second major design patent conference this year! On November 21, Suffolk Law School will be hosting a design patent conference entitled “Design Patents: Modernizing an Old Property Interest.” This is the second major design patent conference of 2013, which speaks to the increasing importance of design patents in a robust intellectual property portfolio. Hopefully Suffolk will settle on a useful hashtag for the event, much like Stanford did with their own design conference back in April with great success.

Last week, the Faculty Lounge blog posted an interesting discussion of the ornamentality requirement (or lack thereof) in design patent law.

The design patent shapewear war between Spanx and Yummie Tummie is transferring to New York after some fancy footwork by counsel for Yummie Tummie.

JDSupra published an interesting design patent article penned by Brent Dougal of Knobbe Martens Olson & Bear, LLP, titled “Design Patents: A Low Cost Option for Expedited Patent Protection.” We have often remarked that dollar for dollar, design patents probably afford more protection than any other form of IP. They are relatively cheap to obtain, and if asserted by a knowledgeable design patent litigator, should be very inexpensive to assert.

The Law of Fashion Blog has posted a interesting roundup of fashion-related design patents that author Charles Coleman will be discussing in his forthcoming article in the Harvard Journal of Law & Technology Digest.

Friday, October 18, 2013

Design Patent Roundup

We may have taken a break, but design patent litigation has not. The theme for the beginning of October appears to be out-of-season designs, with new cases relating to staying cool and outdoor sports. As before, we will continue to be on the lookout for key developments on any of the cases discussed below. 

Wednesday, October 16, 2013

Is There a “Design of Nature” Exception for Design Patents?

Authors comment: Contrary to the rumors you might have heard, the Ordinary Observer Blog is still alive and well. It turns out that litigating in a rocket docket is not conducive to consistent blogging, but with that out of the way, we will now return to our standard blogging regimen…

One of the most interesting aspects of design patent law is the fact that old cases really matter. One obvious example is Gorham v. White, which the Supreme Court decided in 1872 and which is still cited in almost every design patent decision. But even less routine questions of design patent law are often answered in decisions that are 20, 40, or even 80 years old. For example, a question that often comes up in design patent litigation and prosecution is the issue of designs that are inspired by nature, such as shapes and designs that are modeled after animals or naturally occurring objects. As is so often the case with design patents, the leading authority comes from old cases: two 1935 decisions of the Court of Customs and Patent Appeals both called In re Smith, 77 F. 2d 513 (Smith I) and 77 F. 2d 514 (Smith II).

In both of the Smith cases, the CCPA was asked whether the PTO had properly rejected applications for a design patent on a doll as not constituting design-patentable subject matter. The court described one doll design as follows:

the figure of a naked baby standing, holding its nursing bottle in its right hand, and applying a watch to its ear with its left hand. The appearance of the child is that of intense listening to the sound of the watch. The figure of the infant seems to be that of one about one year of age, and, so far as can be detected, is a representation of a normal child of that age, with no unusual features not found in the ordinary child.

Smith I. However, despite this seemingly unique scene, the CCPA upheld the PTO’s rejection of the designs as unpatentable because “what the appellant has done is to take a natural form, in a natural pose, and utilize it as his design. This does not constitute invention.” Id. Although the applicant pointed to several issued design patents for dolls, the Court held that those designs were distinguishable because each “had unusual, striking features, departing from the ordinary, and which were alluded to in the cited cases, such as the exaggerated headdress, elongated eyelashes, and the spit curls in the ‘Splashme’ doll. Here there are no such abnormal or grotesque features.”  Id.  Below are the patentable doll designs discussed in the case:

The CCPA explained its reasoning in Smith II, stating that "mere simulation or imitation of natural forms, which any artisan has the right to apply to any object, is not properly the subject of a patent." Smith II. “The difference between what constitutes invention and a mere imitation of natural forms suggests itself in the gargoyles of architecture and the unicorn and dragons of English and French heraldry. These abnormal forms might well constitute invention and be the subject of design patents, while mere imitation of reproductions of a normal horse or serpent or human face might not. It is the departure from the normal and usual which, in such cases, might constitute invention.” Smith I.

The Smith cases are still good law. Yet, in the years since they were decided, this obscure rule of design patent law seems to have received little attention, and one can find many examples of seemingly natural designs finding their way through the PTO, apparently without embellished or grotesque features:

However, with the renewed interest in utility patent eligibility under § 101, you may begin to see creative design patent defendants seek to reestablish this defense to design patent infringement. Designers should also seek to embellish their designs whenever possible, to ensure that their validity cannot be called into question for lack of design patent-eligible subject matter.