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.