Friday, November 22, 2013

Design Patents: Modernizing an Old Property Interest (P.M. Session Live Blog)

We are back from our lunchtime discussion that was directed by Gary Dewar, Senior IP Counsel of New Balance.  Mr. Dewar lead us on an interesting discussion of design patent practice from the client's perspective.  Most interesting was Mr. Dewar's observation that clients tend to view design patents as a gap filler, used when competitors or counterfeiters seek to copy the appearance of a product, but are incapable of replicating the functionality of the product.  Another helpful observation was that the strength of a design patent was almost secondary to the speed with which it can be awarded by the patent office.  Most of the "businesses" that design patent owners confront have no interest in contesting infringement or validity and will simply cease all operation upon receiving a cease and desist letter.  Practitioners should keep this in mind.

More from the P.M. session after the jump!

2:35 - Chris Carani is discussing a conflict within design patent case law regarding claim construction and functionality.  Some cases say that functional features cannot be read out of the claims for purposes of the infringement analysis, but OddzOn Prods. v Just Toys takes the opposite approach, reading the tail fin out of the design patent claim.  Stanley Works seems to support the conclusion in OddzOn, but is this correct?  Isn't this "claim destruction" as opposed to "claim construction?"  In the Keurig case, the court used claim construction as a "divid and conquer" approach instead of taking on a true functionality analysis under Section 171.

2:52 - Perry Saidman says that the key to understanding the functionality doctrine is appreciating the difference between de facto functionality de jure functionality.  We should do our best to base our arguments on the varying forms of functionality before courts.   In trade dress law, de jure functionality is found when an element is essential to the purpose of the article or affects the cost or quality of the article. See Qualitex.  This contrasts with the test for functionality which asks whether the design is purely dictated by function alone. All industrial designs include de facto functional features.  If there is no other way to make the product, then it is de jure functional for purposes of design patent law.

3:26 - Perry Saidman made a dramatic point about the infringement analysis for design patents.  First, he had us vote on a series of potential infringers, and then yelled "HOW CAN YOU KNOW IT IS AN INFRINGEMENT WITHOUT SEEING THE PRIOR ART!!!" in honor of his patent law professor from GW.   Mr. Saidman's point is well taken.  Egyptian goddess made it clear that the scope of a design depends on how crowded the field of prior art is.  The first rule of design patent infringement?  LOOK AT THE PRIOR ART.  The second rule of design patent infringement? LOOK AT THE PRIOR ART!

3:48 - Michael Zeller (counsel for Samsung) is pushing back against some of the discussion relating to factoring out functional elements during claim construction.  From his perspective, there is good reason for limiting protection to the ornamental features of the design.  In his mind, basing infringement on "the overall appearance" of the design is just a way to disregard the designs, allowing lawyers to make lawyer's arguments.

3:57 - Mr. Zeller is discussing older cases standing for the proposition that the disgorgement of profit should be apportioned in some cases between the profits derived from the patented features of the design and the other features of the design, such as functionality.  Mr. Saidman distinguished the piano case because the parts of the piano were separable and were often sold separately.  Congress also amended the statute to call for the disgorgement of "total profits."

There was a spirited discussion between counsel for Apple and counsel for Samsung regarding the scope and purpose of the disgorgement remedy to close out the day, which seems fitting.

All in all it was a very fun and informative day.   I'll provide some final thoughts in Monday's design patent links.   Have a great weekend everyone!

No comments :

Post a Comment