This week, the en banc Federal Circuit issued an opinion in In re Tam, No. 14-1203 (Fed. Cir. Dec. 22, 2015), holding that the relevant portion of Section 2(a) of the Trademark Act barring the patent office from registering scandalous, immoral or disparaging marks was an unconstitutional infringement of the First Amendment. The Federal Circuit's decision has significant implications for another trademark case pending in the Court of Appeals for the Fourth Circuit, wherein the Washington Redskins seek to overturn the Patent and Trademark Office's cancellation of the "Redskins" trademark on the same grounds. Pro-Football, Inc. v. Blackhorse, No. 15-1874 (4th Cir. filed Aug. 6, 2015). But what does this decision mean for design patent law, which retains the authority to refuse to issue patents covering ornamental designs deemed "offensive to any race, religion, sex, ethnic group or nationality?" Find out after the jump.
Wednesday, December 23, 2015
Tuesday, December 15, 2015
It's not every day that the New York Times reports on design patent news. But when it does, it usually has something to do with smartphones.
The big news in design patent law today is Samsung's inevitable appeal to the Supreme Court from its August loss (mostly) at the Federal Circuit. Just last week, Apple and Samsung appeared to finally be putting this lawsuit behind them, when it was announced that Samsung had agreed to pay Apple $548,176,477 to satisfy the judgment entered by Judge Koh and affirmed by the Federal Circuit. However, in the agreement, Samsung had reserved its right to "reimbursement" if the judgment is reversed.
In its petition for writ of certiorari, Samsung points out two alleged errors by the Federal Circuit - 1) whether the Federal Circuit should have "factored out" the allegedly functional aspects of Apple's design patents, and 2) whether the Federal Circuit erred by not apportioning Samsung's profits between the profits attributable to the infringing design and the profits resulting from other aspects of the infringing products.
Of course, Samsung worded the questions presented somewhat differently:
The questions presented are:
1. Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?
2. Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?
Regardless of how Samsung chooses to articulate the issues, however, a Supreme Court hearing seems unlikely, in the opinion of this author.
With respect to the first issue, the Federal Circuit did an excellent job of clarifying its own, somewhat confusing precedent from cases like Richardson v. Stanley Works. In Apple v. Samsung, the court explained that that the functional aspect of a claim may be conceptually factored out as part of claim construction without literally "exclud[ing] those components in their entirety." See our earlier post on this topic here. This pronouncement of the law will help simplify design patent claim construction, while emphasizing to juries and judges that designs do not protect functional concepts, only the appearance of an article of manufacture.
With respect to the third issue, it is highly unlikely that the Supreme Court would attempt to blatantly overrule the clear, expressed wishes of Congress. Samsung seems to argue that § 289 is just "really old." But it's unclear why the Supreme Court's analysis of this argument would be any different from the Federal Circuit's:
In reciting that an infringer “shall be liable to the owner to the extent of [the infringer’s] total profit,” Section 289 explicitly authorizes the award of total profit from the article of manufacture bearing the patented design. Several other courts also concluded that Section 289 authorizes such award of total profit. ... The clear statutory language prevents us from adopting a “causation” rule as Samsung urges.
So while its exciting to see design patents in the news, don't hold your breath for the first Supreme Court design patent case in 100+ years. Of course, we could be wrong and, if we are, we will be the first to celebrate.
Friday, December 4, 2015
A recent grant of summary judgment to defendants proved just how important it is to clearly mark products and communicate design patent rights to the public. On November 4, Judge Paul Barbadoro of the District of New Hampshire granted the defendants’ motion for summary judgment as to the plaintiffs' claims of patent infringement in a two-year case regarding funeral equipment. See Gallagher et al. v. Funeral Source One Supply and Equipment Co., Inc., et al., 14-cv-115-PB (D.N.H 2015). The case stands as a reminder of what can happen when design patent owners fail to properly mark their products with the patent number.