Upcoming ABA Roundtable - Design Patent and Trade Dress Litigation: More than Meets the Eye

As 2014 comes to a close, we wanted to make design patent practitioners and enthusiasts aware of an important upcoming ABA webinar regarding design patent litigation.  The webinar, titled Design Patent and Trade Dress Litigation: More than Meets the Eye, will take place on January 21, 2015 from 1:00 E.T. - 2:00 E.T.  The webinar is free and is being presented by the ABA Intellectual Property Litigation Committee.  The speaker will be Christopher V. Carani, a recent guest blogger for the Ordinary Observer.  Participants may register using the above hyperlink. 

This promises to be an important and valuable webinar for any practitioner who is currently or may ever be involved in a design patent litigation.  In my experience, attorneys tend to underestimate the nuanced style of litigation that is required in a design patent case.  Applying the techniques and themes learned from utility patent litigation will often lead to undesirable results.  Many attorneys have learned, through trial and error (literally), that design patent litigation is a very different animal.  Even seasoned utility patent litigators will benefit from a overview of the tactical distinctions between utility patent litigation and design patent litigation, which is becoming a more important tool in the intellectual property arsenal of many of our clients.  

Here is the program description from the ABA website:

Design Patent and Trade Dress Litigation: More than Meets the Eye:

From the design houses of New York City, to the storied industrial design firms of 

Chicago, to the cutting-edge think tanks of Silicon Valley, the desire for effective and enforceable design protection is at an all-time high. Simply put, looks matter. Recently released statistics show that applicants are securing U.S. design patents at record rates. With more design patents issued, there also has been a marked uptick in design patent litigation filings. While design patents share much in common with utility patents and trade dress, they have significant and distinct differences from those rights, which if not understood, can present unique traps for the unwary when it comes to litigation. In this CLE, leading Design IP attorney Christopher V. Carani will discuss design patent-specific litigation issues, including best practices for asserting, and defending against, claims of design patent infringement, the design patent infringement standard, design patent claim construction, the ins and outs of design patent drawings, design patent defenses of prosecution history estoppel, anticipation, obviousness, indefiniteness. Along the way, Mr. Carani also will offer insights and strategies for cases involving both trade dress and design patent infringement claims. 

Speaker: Christopher V. Carani is a partner at the Chicago-based intellectual property law firm of McAndrews, Held & Malloy, Ltd. For over 15 years, Chris has been a leading voice in the field of Design IP, which regards the intersection of design rights, trade dress and copyright law.  Chris counsels clients on strategic design enforcement and protection issues; he is often called upon to render infringement, validity and design-around opinions and serve as a legal consultant/expert in Design IP cases.  Carani has extensive experience litigating Design IP cases.

Apple v. Samsung Oral Arguments, Part I - Functionality and Markman

If you haven't had time to listen to the Federal Circuit arguments in the Apple v. Samsung case last week, don't worry.  The Ordinary Observer has you covered.  We will be examining the arguments in two parts.  Part I will take a look at the functionality discussion that dominated the hearing.  Part II will examine the arguments relating to apportionment.

Samsung began its presentation last Thursday by focusing on functionality, in the context of design patent infringement, and whether the district court was justified in providing the following jury instruction:

If you find by a preponderance of the evidence that the overall appearance of an accused Samsung design is substantially the same as the overall appearance of the claimed Apple design patent, and that the accused design was made, used, sold, offered for sale, or imported within the United States, you must find that the accused design infringed the claimed design.

Samsung complains that Judge Koh failed to "filter out" the allegedly functional elements of Apple's design patents for the jury and failed to offer a jury instruction directing the jury's attention to the "ornamental" aspects of the claim as opposed to the "overall appearance of the claimed Apple design patent":

Kathleen Sullivan (counsel for Samsung): ... As given, the infringement instruction ... instructs the jury to compare the overall appearance of the Samsung and Apple Designs.  Your Honor, crucially, what's missing there is the word "ornamental." You're right that earlier in the invalidity instructions she refers to the term "ornamental."  But the invalidity instructions can't cure the problem with the infringement innstruction.  ... Your honor, we're not saying that there should have been exact, magic words.  We gave her multiple choices, we said "please define the difference between functional and ornamental."  We said "please district court, take out these few things that Apple has admitted are functional..."  As Egyptian Goddess says, the district court has discretion how to distinguish functional from ornamental, but it does not have discretion whether to distinguish functional from ornamental... 

The Court:  What do we do about about the case law that says that your'e supposed to look at the overall design and you're not supposed to just take ornamental features in isolation? 

Sullivan: Your Honor, what you do is say "overall ornamental appearance."  The crucial problem here is that the jury was not instructed to, nor was there any claim construction limiting it to comparing the overall ornamental appearance. 

The problem with Samsung's argument is that it urges the court to turn the question of functionality, for purposes of infringement (i.e. claim construction), over to the jury.  Obviously, that approach would conflict with the Supreme Court's Markman decision, holding that claim construction is exclusively the province of the court and cannot be handed over to the jury.  

As a reminder, functionality can come up in design patent litigation in two contexts: invalidity and infringement.  In the invalidity context, the question for the jury is whether the design is functional as opposed to ornamental.  If the design is dictated solely by function, as opposed to ornamentation, it is invalid for failing to meet the ornamental requirement of § 171.  In the infringement context, courts sometimes seek to "filter out" functional aspects of the claim as a matter of claim construction.  See, e.g., Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010).  While some have questioned the wisdom of this approach as improperly dissecting the claim, it remains a contentious issue in design patent law. 

Samsung argues that Judge Koh's instructions were improper because they failed to instruct the jury to consider only the ornamental aspects of the claim and failed to "define the difference between functional and ornamental" in the infringement context.  But such an instruction would have been tantamount to charging the jury with claim construction - here, selecting which design elements were functional and filtering them out of the claim.  In the utility patent context this would be like reading the Phillips case to a jury and then instructing them to evaluate infringement "applying the proper claim scope."  That would be reversible error.

If there was any error in the jury charge, it would have been in Judge Koh's decision not to construe the functional limitations of the claim, at all.  To the extent functionality was really at issue in the infringement context, it was Judge Koh's job to construe the patent, not he jury's.

The Federal Circuit has given conflicting guidance on a trial court's "discretion" in construing "functional and non-functional elements."  In Egyptian Goddess, a case we have addressed several times, the court stated that "where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent."  Yet, in the next paragraph, the court also said "[w]e therefore leave the question of verbal characterization of the claimed designs to the discretion of trial judges..."  It is curious that Judge Koh would send the question of design patent functionality (in the validity context) to the jury but simultaneously decline to construe any functional elements of the claim.  If there was a question of material fact as to whether any of the design patents were functional, as a whole, isn't there necessarily a question of fact as to whether individual design elements are functional?

The answer may come down to the extent of Judge Koh's discretion in construing the design patent (or not). Trial judges may have discretion to determine whether the functional limitations, if present, would improperly impact the jury's consideration of the overall ornamental design.  For example, with utility patents, judges are not obliged to construe every conceivably disputed claim term and always have some level of discretion. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F. 3d 1554 (Fed. Cir. 1997) ("Claim construction is ... to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy.").  Judge Koh likely used her discretion to decline to spell out what was ornamental vs. what was functional for the jury if she believed that the allegedly functional elements of the design would not meaningfully impact the jury's determination of infringement.

The Federal Circuit has an opportunity to clarify a district court's discretion in construing a design patent to "filter out" functional limitations.  As with any claim construction issue, district courts ought to be allowed some independence in determining when design patent claim construction is "necessary" or would otherwise be more helpful than harmful for the trier of fact.  This should include the discretion to decline to construe the design at all, even when functionality is at issue in the validity context. 

Chris Carani on Functionality - A Sensible Solution

Design patent all-star Chris Carani recently published a comprehensive review of the functionality issue in design patent law.  The article, titled Design Patent Functionality: A Sensible Solution, has been published in the ABA Section of Intellectual Property Law's periodical, Landslide, and argues for a balanced approach to the functionality issue that honors the statutory requirement for "ornamental" designs under Section 171 of the Patent Act.  You can read the full article here.  With Mr. Carani's blessing, we've highlighted some of the key points, below.

Mr. Carani explains how the functionality doctrine has been expanded in recent years, in part due to a relatively straightforward Federal Circuit decision in 1998 holding that design patents protect designs and do not provide protection for general concepts.  See Lee v. Dayton-Hudson (1998).  We have echoed this same caution here on this blog several times.  The article argues that the modern perspective on functionality has sprung out of a misapplication of this fundamental truth about design patents, but that the functionality doctrine ought to be confined to a inquiry about subject matter eligibility, and should not expand into a piece-by-piece dissection of design patent claims. 

Mr. Carani uses a charming graphic to illustrate his point:

Some courts have interpreted the functionality doctrine to require that any functional elements within the claim be "filtered out" of the claim as part of claim construction or jury instructions.  In the example above, a court might arguably "construe" the key in Example B as having no claim regarding the design of the actual key mechanism.  In other words, the court might construe Example B to be identical to Example A, based on functionality.  However, the statute suggests that the functionality doctrine may be more akin to a subject matter eligibility test, asking whether the claimed design, as a whole, is ornamental or dictated solely by the function of the article.  For example, the design claimed in Example C is arguably dictated by the function of the key (i.e. fitting a lock).  See See Best Lock Corp. v. Ilco Unican Corp., 40 USPQ2d 1048 (Fed. Cir. 1996).  As such, the claim of Example C, as a whole, may be dictated by function and therefore ineligible for design patent protection, whereas Example B, as a whole, is likely eligible.

Mr. Carani argues in favor applying functionality as suggested by the statute and resisting the urge to "filter out" functional limitations within a design patent claim.  The PTAB may be signaling its agreement with this suggested approach in its recent IPR decisions, as we have previously noted. 

Mr. Carani has offered a comprehensive examination of the historical underpinnings of the functionality doctrine and its proper role within modern design patent jurisprudence.  His article is particularly timely as some courts have begun to suggest that there may be some linkage between the functionality doctrine in design patent law and in trademark law, which are distinct doctrines serving different public policy goals. 

Chris Carani will be leading a discussion on the topic of functionality during the next ABA Design Committee conference call on December 16. 

Judge Robinson Reverses on "Normal Intended Use"

Back in August, we reported on a decision from Judge Robinson on the issue of how to define the "ordinary observer," in the case of Poly America, L.P. v. API Indus., Inc..  This case concerns a design for a box for holding and dispensing household trash bags.  As part of that decision on API's unsuccessful motion for judgment on the pleadings, Judge Robinson also addressed whether the internal flaps of the accused cardboard box could be a distinguishing feature of the accused design.  Judge Robinson concluded that the internal flaps could not be a distinguishing feature of the accused design because they would not be visible during the normal, intended use of the accused product.  

As I interpret the above in the context of this case, I come to several conclusions. In the first instance, the "normal use" of the product at issue- a box containing plastic trash bags - extends well beyond the stage of manufacturing (where API would place the hypothetical purchaser) and retail sale to the homes of the retail consumers who open the boxes to use the bags. In this regard, the flaps depicted in figures 8-10 of the '719 patent are not visible at any time during the normal use of the product. Rather than support API's position, then, I conclude that the analysis in Contessa confirms my initial analysis.

Order Denying Motion for Judgment on the Pleadings at 6-7, available here (emphasis added).  Judge Robinson's August decision left little doubt that the internal flaps of the design patent at issue had been construed as immaterial to the question of infringement, as a matter of law.   While some questioned the correctness of that decision (see comment section of our original post), it became the law of the case back in August.

As a reminder, below are the figures from the design patent-in-suit and the accused box:

Poly-America was no doubt surprised, therefore, when Judge Robinson granted summary judgement of no-infringement to API last Tuesday, citing the differences in this same exact feature of the accused product. Only three months after holding that the internal flaps of the cardboard box were irrelevant to the infringement question, Judge Robinson held on summary judgment that the differences in this aspect of the box, alone, precluded a finding of infringement. Essentially, the Court held that it had overlooked recycling as part of the normal, intended use of the product:

In this regard, API presented expert testimony that, regardless of what an ordinary observer would see at the time of purchase, an ordinary observer would view the even top flaps, tabs and slots of the patented design "upon opening the box from the top or flattening it for recycling." ... Although Poly questioned the frequency with which an ordinary observer would view these features, it was unable to point to any evidence that would contradict APl's contention that the flaps, tabs and slots are visible at the point of disassembly, or that recycling was part of a box's "normal use." ... Because Poly failed to identify a genuine issue of material fact with respect to the "normal use" of the box at issue, the court considers the flaps, tabs and slots as part of the overall design for purposes of its infringement analysis.

Order Granting Summary Judgment at 15, available here (emphasis added). 

While Judge Robinson's reversal may seem unfair to Poly America, it is probably the correct conclusion in this case.  API's arguments at the pleadings stage appears to have focused on the visible aspects of the accused design during the manufacturing process, not the normal, intended use of the ultimate consumer.  Had API made its "recycling" argument a bit sooner, API may have been able to resolve this case back in August based on the same argument.  

Poly America is a reminder that it is important for design patent litigants to take a broad view of the normal, intended uses for a given article.  The normal, intended use of a product may encompass any aspect of the products' everyday use, including recycling, washing, drying, wearing, cleaning, opening, closing, or any other customary situation for the product during its life.  Issues of infringement and validity can only be properly decided with a broad perspective on how the design will be encountered in the "real world," and not just within the figures of a design patent.