Friday, November 21, 2014

Reddy v. Lowe’s Companies, Inc. – “As Shown and Described” means “As Shown”

In December, 2013, the Ordinary Observer initially reported on Reddy v. Lowe's Companies, Inc., (1:13-cv-13016), a case filed in the District of Massachusetts on November 25, 2013, concerning U.S. Design Patent No D677,423.  This week, Judge Young issued a memorandum in that case construing the claim of the D'423 Patent.  Judge Young's construction raises some questions as to the court's treatment of narrative elements of the claimed design which warrant further discussion.

The D'423 Patent is entitled "bathroom vanity light shade."  The left-hand image below shows two figures excerpted from the patent, Figures 1 and 2, which are fairly representative.  The right-hand image is a screen shot of what may be an accused device produced by the Defendants.

The claim of this patent is directed to "[t]he ornamental design for a bathroom vanity light shade, as shown and described."  The Court's present memorandum has little to say about what is shown.  It principally concerns what is described.

The specification of the D'423 Patent includes a brief narrative:
The bathroom vanity light shade is an ornamental fixture consisting of a rectangular, metal rod skeleton, wrapped in fabric on three sides (front side, left side, right side), with a stationary acrylic diffuser bottom. The bathroom vanity light shade mounts on the wall with top/back exposed mounting rod.
Virtually nothing recited in the narrative can be visually seen in the patent figures.  The shading applied to four of the sides indicates those surfaces are intended to be transparent, but there is no visible evidence of the so-called rod skeleton, or specific imagery distinguishing fabric and acrylic sides.

This sort of narrative description is unusual but generally not impermissible.  Patent & Trademark Office regulations state, "No description, other than a reference to the drawing, is ordinarily required."  (37 C.F.R. § 1.153(a)).  "However, while not required, such a description is not prohibited and may be incorporated, at applicant’s option, into the specification or may be provided in a separate paper." (M.P.E.P. § 1503.01).   An examiner can object to the inclusion of descriptive statements which are unclear or inaccurate, but absent a proper objection, the PTO will generally permit an applicant to incorporate descriptive statements into the claim by adding the words "and described" after "shown" in the traditional claim language, “The ornamental design for (the article which embodies the design or to which it is applied) as shown.”  (Id.).  The patent in this case claims "[t]he ornamental design for a bathroom vanity light shade, as shown and described."

Judge Young's approach represents a substantial diversion from PTO practices.  He concludes that design patents operate under a "figure-only" framework, where:
any written description that goes beyond the scope of the figures would be unprotected by the patent, and thus ought not be part of the construed claim.  Thus, the references to "wrapped in fabric" and an "acrylic diffuser bottom," since they are not shown in the figures, would stretch beyond the patent.
Judge Young proposes that regulations allow only "written descriptions that clarify features on an existing drawn figure" and not "written descriptions that add new features not present on the figure."  Because "fabric side" and "acrylic diffuser bottom" may be viewed as added features, Judge Young contends these statements are best viewed as a "preferred embodiment," though he admits, "they probably ought not have been included when the patent was issued."

The defendants also argued that the patentee was estopped from arguing the acrylic diffuser and fabric sides were not limitations on the claims based on statements made by the patentee during the prosecution of the patent.  Judge Young rejected this argument, finding the prosecution history subject to multiple interpretations and therefore not a clear disavowal of claim scope.

Judge Young's construction in this case is difficult to square with PTO regulations allowing descriptive  statements in the specification of design patents to "supplement the drawing disclosure to define the scope of protection sought by the claim."  (M.P.E.P. § 1504.04).  While the Judge correctly places a strong emphasis on the figures as the best description of the claimed invention, effectively ignoring narrative statements in the written description of a design patent is relatively unprecedented.  The court draws a distinction between narrative statements that clarify, such as those that disclaim broken lines appearing in the drawings, and those that add new features, but the line between the two is muddy.  If a patentee may use words to disclaim broken lines, why then, can a patentee not use descriptive statements to disclaim materials which do not form part of the claimed invention (i.e., materials except acrylic and fabric)? 

This is not likely a case where claim construction is effectively determinant.  Judge Young's construction is expressly without prejudice to future jury instructions or other grounds of invalidity and non-enforceability.  Furthermore, while the patentee has obtained a construction which likely help their arguments in favor of infringement, for the purpose of invalidity, the plaintiff faces the prospect of defending as novel and non-obvious a light shade in the shape of a rectangular box having four sides and two open sides.

We will be on the look out for future developments in this case.

Tuesday, November 11, 2014

Guest Post - In Apportionment Debate, Design Patents Should Be Distinct

Editor's Note:  The below guest post was authored by Brice Beckwith, a law student at Oklahoma University College of Law.  Brice presented at last month's ABA Design Committee meeting on the subject of apportionment and was kind enough to write up his presentation for the Ordinary Observer.  The ABA Design Committee holds monthly meetings (via conference call) where the members discuss current events in design law and noteworthy decisions.  So sign up and join the conversation!

When I began to look through the Apple v. Samsung briefs concerning disgorgement of total profits under § 289 a few weeks ago, it occurred to me that in many ways the briefs illustrate everything I have come to expect from this area of law. The arguments proceed despite a noticeable lack of recent or direct case law, there is admixture of copyright and trademark policy rationales throughout, and (my favorite) a dependence on late 19th century legislative history as applied to modern smartphones. In my view, the characteristics of these arguments lend credence to the belief that the state of design patent law loosely holds shape as some sort of intellectual property hodgepodge. Nowhere is this more apparent than when reading the arguments that make comparisons between design patent law and other intellectual property regimes. For example, many arguments against § 289’s disgorgement of total profits were similar to calls for a causation/nexus requirement between the infringer’s profit and the infringement. By looking at these arguments we can get some idea as to what makes this area so amorphous, and how that may cause a few pitfalls. 

In its Appellant Brief, Samsung argued for a causation requirement for § 289 based on two premises. First, Samsung, as best it could, stayed within the realm of patent law by arguing that patent infringement is essentially a tort, and that as a tort it requires a proof of causation. To make this claim, Samsung needed both a utility patent case, Carbice Corp. v. Am. Patents Dev. Corp., 283 U.S. 27, 33 (2002), and a copyright case, Mackie v. Rieser, 296 F.3d 909, 915 (9th Cir. 2002). Later, in its Reply Brief, Samsung clarified that this causation requirement would not violate the Congressional intent to abolish apportionment because the requirement would be separate from and precede any apportionment inquiry. See Samsung Reply Brief at 14.  Second, in its appellant brief, Samsung argued for an interpretation of § 289 that would treat an award of profits as a ceiling and emphasized that a causation requirement may already exist in § 289’s language, which states that a patent holder “shall not twice recover the profit made from the infringement.” Relying on another utility patent case, Samsung attempted to bolster this interpretation by tying a lack of causation requirement to constitutional concerns over inappropriately enlarging the patent monopoly raised in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 5-6, 86 (1966). 

In some contrast, Professor Mark Lemley’s arguments in “Brief Amici Curiae of 27 Law Professors In Support of Appellant Samsung,” took a different road to the same conclusion. Professor Lemely set up trademark law as a close analogue to design patent law in order to show the court a more familiar route it could take when resolving the disgorgement issue. Among several other trademark rules that were offered, was a trademark requirement that a court could award profits only on sales that were attributable to the infringement. See id. at 7. Although Professor Lemley made this point more in passing, it demonstrates a reality in design law that often advocates must reach beyond design patent law for answers.

In that same vein, in a post written on this blog back in August by William Seymour, we can see a similar argument for a causation/nexus requirement stemming from a third body of law. Whereas Samsung chose patent law, and Professor Lemley looked to trademark, Mr. Seymour provided a solution through Copyright law. From his perspective, the copyright disgorgement remedy found in 17 U.S.C. § 504b offers a better analogue to § 289. After comparing the history of the two statutes, Mr. Seymour came to the conclusion that the differences between the two statutes provides strong evidence that the court should not interpret § 289 to allow apportionment. Despite this, Mr. Seymour offered another out for Samsung by pointing to the judicially created nexus requirement for § 504. Under this nexus test the copyright owner must show a legally significant relationship between the infringer’s gross profits and the infringement. Furthermore, the nexus inquiry acts as a threshold requirement before the disgorgement of the infringer’s profits even comes into question. In many ways this solution mirrors what both Samsung and Professor Lemley offered in their respective briefs, and therefore is yet another example of how, in design patent law, the same destination can be reached by taking different paths. 

Taken as a whole, these arguments echo in practice what many commentators propose in design patent scholarship, which is to replace design patent law (either wholly or partly) with copyright, trademark, or some type of sui generis scheme. There is an argument that the very nature of industrial art dictates that the law governing design patents must exist in a space that blurs the lines between other intellectual property regimes. However, these blurred lines may just as likely not be caused by the nature of the thing being protected, but instead by the, long-standing and recently changing, unpopularity of the law. A risk in substituting legal tools from trademark and copyright law is that any independent purpose that design patents once had may be lost somewhere in the mix. Maybe we forget the very reason that design patents were created as a separate entity and, in that forgetting, the replacement of the design patents with other schemes becomes all that more preferable. 

These arguments may also reveal an implicit unease that exists in allowing design patents to be independent from other intellectual property regimes. When faced with rebutting the proposition of a causation requirement, Apple and its amici struggled to find policy rationales that solely belonged to design patents. For instance, in its Appellee brief, Apple rejected any call for a causation requirement on the premise that causation would violate Congressional intent because it essentially equated to apportionment. However, in doing so, Apple avoided making any policy arguments beyond Congressional intent to justify a remedy as severe as § 289. 

In his amicus brief, Perry Saidman made the very same argument that any question of causation equates to a question of apportionment; however, unlike Apple, Mr. Saidman did offer a justification for § 289. Mr. Saidman claimed that one reason design patents require § 289 is because when an infringer appropriates a design patent they are appropriating the “very face of the company.” Id. at 19. Mr. Saidman further noted that when a design patent is infringed the infringers often take more than just product design, rather the infringers in effect misappropriate the very brand of the patent holder. See id. This concern for the protection of brand demonstrates just how blurry the lines in design patent law can be. It is an argument that design patents are unique and therefore deserve a special tool in § 289, but what makes design patents unique in this case is a shared purpose with unfair competition law. In some ways this argument resembles that of Samsung, Mr. Lemley, and Mr. Seymour because it demonstrates the need to incorporate tools and policy from other intellectual property regimes when an immediate answer is not available. 

With these arguments the Federal Circuit has a chance, through its interpretation of § 289, to add some clarity to the amorphous subject of design law. Although the Court must make a skin deep choice regarding apportionment, the more interesting decision may be whether the Court decides to justify its holding uniquely from a design patent perspective or from some other intellectual property regime.