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.  


  1. I am also a suitcase pet bed maker and have had the same experiences as many others, especially on eBay and etsy, who have had their artistic creativity restricted by over-reaching design patent holders.

  2. If you're on etsy, the over-reaching design patent holder who has tried to restrict your artistic creativity is most likely Victoria Burnett, the "patent holder" who is suing the above-mentioned pet suitcase bed maker. She's been going after several other artists who make similar pet beds.

  3. I actually looked at the patent in detail and ironically if the examiner had bothered to click on the link in the site shown as a cited reference she would have seen literally hundreds of suitcase pet beds made prior to 2012 going way back to 2008. Since the article was cited does that mean that the link in her article is somehow automatically referenced in this application even though it wasn't looked at.

  4. I am also an artist who makes dog beds using old suitcases. Although I have been making them since 2009. I am not the first person to do so. I got the idea from a magazine article showing a dachshund in a blue suitcase. Included in the article, was instructions on how the bed was made. I typed 'dog bed suitcase' in to my browser and was surprised and delighted to find more than one hundred postings from people who had made a pet bed using a suitcase. Some retained the lid and original pocket. Many had wood feet, novelty fabric pillows and embellished sides. Each was different in one way or another.
    The idea that one person would lay claim to this idea as her own is preposterous. I have reviewed her patent and see nothing proprietary about the design. I am perplexed as to how a patent was granted in the first place.

  5. Isn't filing such a lawsuit infringing on an individual's constitutional right to make a living with their own two hands?

    Also, with such a frivolous lawsuit, does the defendant have to counter-sue for damages in order for the court to require the plaintiff pay for the defendant's lawyer fees or can that be requested as part of the ruling if it's found in favor of the defendant?

  6. I just found a video of a television program originally aired on PBS channel KSL5 back in 2008 showing how to make suitcase pet beds with legs. How does this change things.

    1. Hi everyone! Thanks for all of the comments. It seems like this case has struck a nerve within the suit-case-pet bed community. I had no idea there were so many people who made these types of beds.

      I completely understand your frustration with this patent. It definitely would have been helpful if the patent office had looked at the cited references a little more closely, but I doubt the patent examiner had any idea how this patent would be asserted against the pet bed-making public. In truth, examiner's assign a very narrow scope to the design patent applications they are reviewing. The problem is that the patent owner typically assigns their patent a far broader scope upon the issuance of the patent.

      I'm curious to see some of the prior art you all have referenced in this thread. "Free to Create," do you recall what magazine provided instructions on how to make these? GWW250, is there a link to the PBS program?

  7. Here is the link to the KSL TV Suitcase Pet Bed episode aired on June 16, 2008 at 9:30 in the morning.

  8. Here are a few prior art print references I've found so far.

    New Yankee Magazine, Jan/Feb 2009, ‘Dog Bed with Style’ how-to article.
    The Bark Magazine, Jan. 2011, ‘Vintage Suitcase Dog Bed’ how-to article.
    Modern Dog Magazine, June 2011, ‘DIY Suitcase Dog Bed’.
    Modern Dog Magazine, June 2011, ‘Suitcase Pet Bed Project’.
    People Magazine, Aug. 2010, ‘Suitcase Pet Beds Packed with Retro Style’.
    Pawsh Magazine, Sept. 2011, “Suitcase Pet Bed’
    Better Homes and Gardens, Dec. 2010, Lisa Christophe suitcase pet beds article.
    Modern Dog Magazine, Dec. 2011, ‘Miles and Amiee Harrison pet beds’.
    Kattliv Magazine, 2010, ‘Photo Interview with Miles and Aimee Harrison’.
    Belladog Magazine, 2011 Marketplace Edition, ‘Atomic Attic Suitcase Pet Beds’.
    Life+Dog Magazine, Issue 13, June 2012, ‘Suitcase Pet Bed of Anna Bevacqua’.
    (How could Ms. Burnett invent the bed when Ms. Bevacqua was asked to publish her work by this magazine four months before the Burnett patent was initially filed).

  9. Here are some I found. They go back as far as 2008 ...

    From Sepember, 2009 ...

    This guy, a Home Decor TV Producer, made this one in 2008.

    December, 2008

    2008 DIY Prize Winner ...

    February, 2008

    YouTube instruction video by TV reporter, 2013

    March, 2009

    This blogger mentions reading a pet bed article in Cottage Living:
    And this woman has the whole collection of Cottage Living Magazine (published 2004-2008). Perhaps she would scour them to see which issue had the pet beds.

    WikiHow article ...

    December, 2008...

  10. Here are a few more ...

    September, 26, 2006 …

    January, 2007 … Blogger Tracey Buxton of ‘A Cottage Industry’ on Etsy says her favorite use for vintage suitcases is making travelling pet beds …

    December, 2007 …

    February, 2008 …

    March, 2009

    April, 2009…

    September, 2009…!1u9yX

    December, 2010 …

  11. One of the problems with design patents is that the general public does not understand exactly what they are. Generally you get a design patent on something you intend to replicate and reproduce dozens, hundreds or even thousands of times. I can't imagine how or why somebody would claim a patent as shown on the drawings and then try to claim that it somehow magically applies to a myriad of different designs done by other artists.