Friday, February 21, 2014

Design Patent Roundup - Feb. 21, 2014

It has been an active week for asserting design patent claims.

Turbo Style Products, LLC v., Inc., No. 2-14-cv-00125 (D. Utah Feb. 20, 2014)

If you blinked, then perhaps you missed Turbo Style Products’ Complaint asserting that is infringing two design patents it holds for car headlight “eyelash” accessories, as pictured below. Turbo Style filed a lawsuit accusing of infringing two U.S. design patents, D672917 and D675776, each titled “Headlight Accessory.” In particular, the Complaint asserts both direct infringement under 35 U.S.C. § 271(a) and contributory infringement under § 271(c), but notably not induced infringement under § 271(b). The Complaint also included causes of action for trade dress infringement and unfair competition under the Lanham Act and common law. Turbo Style is represented by Andrew Stavros and Austin Egan of Stavros Law. The case has been assigned to Magistrate Judge Dustin Pead.

The Gillette Company v. SD Blades et al, No. 1-14-cv-00153 (S.D. Ohio Feb. 18, 2014)

Turning from eyelashes to whiskers, Gillette asserted 6 different design patents related to razor blade cartridges and containers in a complaint against SD Blades. The patents at suit are D422751, D430023, D440874, D531518, D533684, and D604904. They relate to the design for such popular razors and razor blade cartridges, such as the Mach® and Venus® lines. A figure of a razor cartridge from the ‘684 patent is shown below. Gillette asserts direct infringement under § 271(a) and induced infringement under § 271(b). While Gillette, unlike Turbo Style, has not included as a party, the complaint centers on Gillette’s assertion that, “the SD Blades ‘Storefront’ on is part of an offering that allows third-party sellers to use’s website infrastructure to offer products for sale over the Internet…through which consumers purchase razor cartridges, dispensers for razor cartridges, and containers that infringe upon Gillette’s intellectual property and design patent rights.” Gillette is represented by Karen Kreider Gaunt and Tammy Imhoff of Dinsmore and Shohl. The case has been assigned to District Judge Michael R. Barrett.

Ames True Temper, Inc. v. Suncast Corp., 1-14-cv-00284 (M.D. Penn Feb. 18, 2014)

Perhaps the winter weather has caused tempers to flare. Ames True Temper is asserting its design patent D557101, titled, “D-Grip for Tool,” against Suncast. Accusing Suncast’s “Centerforce” snow shovel of infringing the design rights. Below is a side-by-side comparison of a figure from the ‘101 patent and the allegedly infringing snow shovel model. Ames True Temper is represented by David Radack, Mark Willard, and Mark Gebauer of Eckert Seamins Cherin & Mellot. The case has been assigned to Yvette Kane.

Friday, February 14, 2014

Comment Period Now Closed on Proposed Rules for Hague Agreement Implementation

On November 29th, 2013, the USPTO published its proposed rules for implementing the Hague Agreement, inviting public comment on their proposals. On February 4th, the period for submitting comments ended. The USPTO will now consider those comments in finalizing its rules.

As discussed in an earlier post, the Hague Agreement provides a streamlined framework for applicants from member nations to obtain international coverage for design patents.

Included among the public comments received by the USPTO is a submission from the Intellectual Property Owners Association, a trade association for owners of patents, copyrights, trademarks, and trade secrets.

In their comments, the IPO noted two sources of concern.

First, the proposed rules do not provide for filing a continued prosecution application (CPA) in an international design application. CPAs are an inexpensive and quick method for resolving small issues late in prosecution, without having to file a continuation application. The IPO suggests altering the rules to provide for CPAs or a functional equivalent.

Second, the IPO expressed concern that the rules do not address a fee issue that could potentially result in a delayed filing date. Under the proposed rules, fees will ultimately be paid to WIPO, the World Intellectual Property Organization, an organization located in Geneva, Switzerland that will administer the international system. The IPO notes that fluctuations in the exchange rate could result in inadvertently minor deficiencies in the fee amounts. The IPO suggests that the USPTO should provide assurances that such a deficiency would not result in a delayed filing date, or otherwise provide against the possibility of deficiencies due to fluctuating exchange rates.

Final rules are expected from the USPTO in the coming months.

Thursday, February 6, 2014

USTPO Design Patent Roundtable: Request for Comments on the Written Description Requirement For Designs

The United States Patent and Trademark Office is hosting a roundtable event to solicit public opinions regarding the written description requirement as applied to design applications in certain limited situations (Ostensibly the circumstances addressed in In re Owens). Members of the public are invited to participate. The roundtable will provide a forum for an informal discussion of the topics identified in this notice. Written comments in response to these topics have also been requested. Here is a link to the PTO’s request for comments for the full details.

What is noteworthy in the invitation is the Patent Office’s “initial impression … that generic boilerplate statements would not adequately reflect what the designer had in his or her possession at the time of filing the application” to meet the written description requirement for later amendments or continuations. The PTO seems to be suggesting that it will require a significant level of detail in any verbal written description submitted in a design application to lend support for design embodiments not expressly disclosed in the drawings.

If you wish to participate:

WHEN: March 5, 2014, beginning at 1:00 p.m. Eastern Daylight Time (EDT), and ending at 4:00 p.m. EDT. Written comments must be received on or before March 14, 2014 to ensure consideration.

WHERE: Madison Auditorium on the concourse level of the Madison Building, which is located at 600 Dulany Street, Alexandria, Virginia 22314

HOW: Members of the public who wish to participate in the roundtable as a speaker must do so by request in writing no later than February 14, 2014.  Registration on the day of the roundtable is available for observation only.  To register, email and provide the following information: (1) Your name, title, and if applicable, company or organization, address, phone number, and email address; (2) whether you wish to attend in person or via Web cast; and (3) if you wish to make an oral presentation at the roundtable, which of the topics identified in section III, below, will be addressed and the approximate desired length of your presentation

WHAT: The Office seeks comments on the application of the written description requirement where only a subset of elements of the original disclosure are shown using solid lines in an amendment or in a continuation application.  Specifically, the Office seeks input on the following topics relating to the written description requirement under 35 U.S.C. 112(a) as applied to design applications in certain limited situations.
(A)  Factors in Determining Whether an Amended/Continuation Design Claim Satisfies the Written Description Requirement: When does “a design [that] includes only a subset of the originally disclosed elements (no new elements are introduced that were not originally disclosed), satisf[y] the written description requirement?” Proposed Factors to discuss:
1.      The presence of a common theme among the subset of elements forming the newly identified design claim, such as a common appearance;
2.      The subset of elements forming the newly identified design claim share an operational and/or visual connection due to the nature of the particular article of manufacture (e.g., set of tail lights of an automobile);
3.      The subset of elements forming the newly identified design claim is a self contained design within the original design;
4.      a fundamental relationship among the subset of elements forming the newly identified design claim is established by the context in which the elements appear;
5.      the subset of elements forming the newly identified design claim gives the same overall impression as the original design claim; and/or
6.      any additional factors, not listed above that would be useful for design patent examiners to consider
(B)  Establishing Adequate Written Description Support in the Original Disclosure: What are the “mechanisms applicants can use to demonstrate that they had possession of designs claimed in future amendments/continuations.” 
1.      A descriptive statement in the originally-filed application (e.g., that specifically identifies different combinations of elements which respectively form additional designs) could be a meaningful way for applicants to demonstrate that they had possession of designs claimed in future amendments/continuation applications.
2.      NOTE - The Office’s initial impression is that generic boilerplate statements would not adequately reflect what the designer had in his or her possession at the time of filing the application.

Registration and speaker presentations request should be directed to the attention of Robert Olszewski, Director, Technology Center 2900, by telephone at 571–272–2200, or by email to Requests for additional information regarding the topics for written comments and discussion at the roundtable event should be directed to Nicole Dretar Haines, Senior Legal Advisor, Office of Patent Legal Administration, by telephone at 571–272–7717, or by email to

Submitted comments will be available to the public at For additional detail please refer to the Federal Register /Vol. 79, No. 25 /Thursday, February 6, 2014 /Notices.