Friday, May 30, 2014

Design Patents Cover Designs, Not Concepts... Usually

There was only one design patent case filed this week, so I've decided to focus this post on a reoccurring issue in design patent law instead of our usual Friday roundup of new design patent cases.  As I noted in last week's roundup, there have been several recent design patent cases  representing a recurring theme - plaintiffs who incorrectly believe that their design patent covers a concept as opposed to a design.  This misconception is the cause of many dubious design patent infringement claims, and is only exacerbated when counsel fail to properly explain the purpose of a design patent, both during prosecution and prior to commencing litigation.  

Last week's design "concept" case was Chuck Roaste, LLC v. Reverse Gear, LLC et al, No. 1-14-cv-01109 (N.D. Oh. May 22, 2014).  This lawsuit deals with a design concept for reversed trousers, having pockets on both the front and the back of the garment so that it may be worn either forwards or backwards.  The problem with the Chuck Roaste lawsuit, in this author's opinion, is that the examples of alleged infringement in the complaint tends to demonstrate non-infringement in the eye of the ordinary observer.  This suggests that the lawsuit has less to do with Chuck Roaste's design patents and more to do with the plaintiff's belief that the design patent-in-suit covers the concept of reversible pants, which it cannot.  For example, one of the figures of the '055 Patent, as shown in the Complaint, claims a leopard print pattern on both the belts and the pockets, which do not appear on the accused Reverse Gear jeans.  In my experience people rarely confuse leopard print with plain old denim...

This week's sole design patent case presents a similar design "concept" litigation.  On Wednesday, one Victoria Burnett filed the case of Burnett v. Bevacqua-Brewer et al, No. 1-14-cv-01706 (D. Md. May 28, 2014).  This is essentially a lawsuit between two individuals that make pet beds out of vintage, used luggage.  The design patent-in-suit is U.S. Patent No. 677,840, titled "Suitcase Pet Bed."  Again, the problem with this case is one of design patent scope.  As shown below, the '840 Patent covers a particular pet bed, not the concept of making a bed for an animal out of an old suitcase. Nor does the '840 Patent include any alternative embodiments.  For some reason. Ms. Burnett elected to claim her design concept using only a generic rectangular suitcase, with a generic handle, and generic locks, as shown below:  

However, the pet beds made by the named defendant, Anna Bevacqua-Brewer, are not limited to such mundane designs.  As shown on her website, she applies this concept to a vast array of vintage suitcases, each having a  design that is noticeably different from the suitcase claimed as part of the '840 Patent.  Indeed, I was unable to find any suitcases on Ms. Bevacqua's website that used a suitcase similar to the one claimed as part of the '840 Patent.  Ms. Burnett's decision to claim a particular vintage suitcase in her design patent would likely doom her case to failure, but for the cost of defending even a frivolous case of design patent infringement (Octane Fitness aside). 

Design patent scope has always been a tricky issue, but there are some guiding principles that can help steer courts and would-be plaintiffs down the right path.  Design patent guru, Perry Saidman is fond of reminding practitioners that design patent scope has almost as much to do with the prior art as it has to do with the dashed and solid lines within the figures.  A proper infringement assessment cannot be made without looking at both asserted design, the accused product, and the prior art.  See, e.g., Saidman, Perry, Egyptian Goddess Exposed! But Not in the Buff(er)..., 90 J. Pat. & Trademark Off. Soc'y 859, 877 (2008) (discussing the prior art implications of Smith v. Whitman Saddle Co., 148 U.S. 674 (1893)).  In general, the more crowded the field of prior art is, the more narrowly a design patent should (or would) be interpreted by an ordinary observer.  Conversely, if a design patent is a true "pioneer" design patent, one might expect its scope to be somewhat broader in the eye of the ordinary observer.

Yet, even a pioneer design patent cannot overcome clear claim limitations based on solid lines, and a design patent can only be expanded so far in the ordinary observer's mind by the state of the prior art.  In this author's opinion, even a total dearth of relevant prior art should not permit a design patent to preclude all further applications of a design concept, like "making pet beds out of suitcases."  To do so would improperly convert a design patent into some kind of bizarre aesthetic utility patent.  Design patents are meant to cover designs, not design concepts... usually.  

Friday, May 23, 2014

Design Patent Roundup - May 23, 2014

This week's design patent roundup brings us five new cases, including a design patent for the "Kris Kross" concept, a balloon design patent with 576 figures representing 35 embodiments, and a plaintiff with no future as a photographer.  Basically, aside from Gillette's razor blade case, it has been a strange week.  

One point worth noting is that four out of five of this week's cases were filed in Ohio, which is quietly become a hotbed of design patent litigation.   

More pictures of Kris Kross after the ... "Jump, jump!"

Monday, May 19, 2014

Design Patent Links - May 19, 2014

It has been a while since our last design patent links post, so there's lots to share.  We begin with a design patent issue of first impression in the Eastern District of Arkansas and wrap up with a check-in on Apple v. Samsung:

Law360 has published an article about a fascinating design patent decision from the Eastern District of Arkansas.  In P.S. Prods. Inc. et al. v. Activision Blizzard Inc. et al., Case No. 4:13-cv-00342-KGB (E.D.Ark. filed June 5, 2013), P.S. Products sued Activision for infringing U.S. Design Patent No. 561,294 for a "Stun Gun," shown below.  The problem is that Activision is in the video game business, not the stun gun business.  P.S. Products was accusing Activision of infringement through its Call of Duty line of video games, which includes a video game stun gun that P.S. Prods claimed infringed its design patent.  On a motion to dismiss, the court found that the video game and the real-life stun gun were not “analogous article[s] of manufacture."  The Law360 article was authored by in-house counsel for Activision, Omer Salik and Neil Yang. 

In an interesting post on The Ordinary Observer (link), we recommended filing "virtual" design patents with any physical design, which may have avoided this very issue.
We usually try to stay away from the "interesting design patent" posts here at The Ordinary Observer, but this new Samsung design patent caught our eye for obvious reasons.  Can you tell which of the below designs belongs to Apple and which belongs to Samsung?  Both of these icon design have been granted by the USPTO:

ANSWER: The icon on the left is Samsung's U.S. Design Patent No.  704,217, which was granted back on May 6.  The icon on the right is Apple's U.S. Design Patent No. 671,558.  Several commentators have already picked up on the similarity between these two design patents, including MacRage, PatentlyApple, and Cult of Mac.  We have previously observed that the scope of design patents before the PTO appears to be far narrower than in a court of law, which is the opposite of what was intended.  However, this principle could be used as a shield in a design patent infringement suit.  Potential defendants may seek design patents of their own and, in effect, get an advisory opinion of non-infringement from the PTO in the form of a design patent listing the relevant prior art on its face.  In this sense, design patents, unlike utility patents, may be used as a shield as well as a sword.  Samsung appears to be applying this principle while it restarts settlement negotiations in their ongoing patent war with Apple, according to DailyTech.  

Finally, in addition to our own commentary, several others have posted on the first-ever successful Inter Partes Review process for Luv N' Care's sippy cup design patent, including Law360, Rstreet, National Law Review, and Virtual Press.  As noted by Digital Journal, Luv N' Care has issued a "clarification" of its pending lawsuit against Munchkin, stating its loss in the PTAB was based on a "technicality."  Apparently, Luv N' Care considers the Patent Act a technicality...

Friday, May 16, 2014

Design Patent Roundup - May 16, 2014

In honor of the NHL playoffs, we bring you this week's new design patent cases, which features a case relating to a design patent for a hockey puck trailer hitch.  The Bruins might take note of this nifty trailer hitch design as they clear out their lockers and haul their gear home for the season.  More cases after the jump!

Wednesday, May 7, 2014

Supreme Court's Octane Fitness Decision Impacts Design Patent Litigation

Yesterday, two of the editors of The Ordinary Observer published a summary of the Supreme Court's recent decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc.  Dkt. No. 12-1184 (Apr. 29, 2014) (link goes to the opinion).   

Octane Fitness is one of the most significant patent rulings to come down from the Supreme Court in recent years, and for that reason alone it deserves mention here.  The decision substantially increases the possibility that a prevailing party in patent litigation will obtain his or her attorneys' fees when the court finds that the case is "exceptional" under Section 285 of the Patent Act.  The increased likelihood of obtaining fees should affect the considerations of patent owners seeking to assert weak patents in litigation, and may embolden patent defendants to defend more cases as opposed to settling out early at an affordable price.  For more information, follow the link below to the IP Law Advisory published by Lando & Anastasi, LLP.

W. Seymour, Esq. & E. Carnevale, Esq., The Supreme Court Makes it Easier to Obtain Attorneys' Fees in Patent Cases.

Octane Fitness is relevant in the design patent world for two additional reasons:
  1. Because stakes in design patent cases tend to be lower than in utility patent cases, the new considerations for plaintiffs and defendants discussed above apply with that much more force in the design patent context; and 
  2. Octane Fitness overruled the Federal Circuit's test articulated in Brooks Furniture Manufacturing, Inc. v. Dutalier International, Inc., 393 F.3d 1378 (Fed. Cir. 2005) - a design patent case.
We will be on the lookout over the coming months to see whether Octane Fitness has a substantial impact on design patent litigation, or on the caliber of design patent suits being brought.

Friday, May 2, 2014

Design Patent Roundup - May 2, 2014

It has been a few weeks since our last design patent roundup, but you will be seeing a lot more of us through the summer. This week brings us only two new design patent cases, including another design patent enforcement action brought by Oakley in California and a design patent case about mobile phone charging stations in Texas. See the designs and accused products after the jump!