Tuesday, December 6, 2016

Supreme Court Sides with Samsung on Design Patent Damages

On December 6, 2016, the Supreme Court issued a unanimous opinion authored by Justice Sotomayor in the Samsung Electronics Co., Ltd. v. Apple, Inc. case concerning apportionment of design patent damages under 35 U.S.C. § 289. Specifically, § 289 makes it unlawful to produce or sell an “article of manufacture” bearing a patented design and makes infringers liable to the patent holder “to the extent of [their] total profit.” The Supreme Court’s ruling rejects Apple’s argument and holds that the meaning of the phrase “article of manufacture” can refer to a single component within a multicomponent product sold to consumers. In support of its reasoning, the Court cites a similarly broad interpretation of the phrase as previously applied to 35 U.S.C. § 171. The § 171 statute defines subject-matter eligibility for design patents.

Monday, November 14, 2016

District Court Relies on Prosecution History Estoppel in Judgment on the Pleadings

Two years ago we reported on the landmark Federal Circuit decision in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, holding for the first time that the doctrine of prosecution history estoppel applied to design patents.  A lingering question following that decision was whether this doctrine was likely to substantially impact design patent infringement cases going forward.  While prosecution history estoppel would bar patentees from claiming an embodiment that they had surrendered, the Federal Circuit also held that the estoppel effect only applied to the discrete embodiment that were disclaimed, and not to the range of embodiment between what was claimed and what was dedicated to the public.  Thus, unless an accused infringer seemingly designed their product to exactly copy an embodiment that the patentee had affirmatively disclaimed, one could wonder whether we might ever see prosecution history estoppel successfully invoked in a district court case.

Last week, prosecution history estoppel was successfully invoked in a district court case.

Thursday, October 20, 2016

The Intersection of Copyrightable Works and Useful Articles at the Supreme Court

While most of the design patent world is focused on the Supreme Court's review of the Apple v. Samsung case, which we reported on last week, the Supreme Court is also set to hear oral arguments on Star Athletica, LLC v. Varsity Brands, Inc., a copyright case that could have implications for the scope of rights available to design owners.

Monday, October 17, 2016

Courtroom Sketches from Apple v. Samsung

As a follow-up to last week's post, we wanted to share the courtroom sketches from Apple v. Samsung that were graciously provided by Art Lien of courtartist.com.  Art really captured the look of confusion on the Justices' faces...

Tuesday, October 11, 2016

Eight Telling Quotes from Apple v. Samsung Oral Arguments

So it finally comes to this. After five years of litigation, a dozen appeals to the Federal Circuit, and close to 1 Million tweets, the Apple v. Samsung case goes before the Supreme Court today for oral arguments. The sole issue being decided on appeal is whether an infringer's profits should be apportioned under 35 U.S.C. § 289. Or, as Samsung poses the question - "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?"

We're lucky to be reporting live from the Supreme Court today as the Supreme Court hears its first design patent case in over 100 years.  For this initial post, we'll be focusing on some of the more telling questions (and answers) from the justices during the hearing.   Continue reading after the jump for some of the more noteworthy quotes and our reaction.

Thursday, October 6, 2016

Premiere Gem Corp. v. Wing Yee Gems – Petitioner Turned Down in Diamond Jewelry Design IPR

In July, the Patent Trials and Appeals Board (PTAB) declined to institute Inter Partes Review of a design patent for an ornamental design of diamond jewelry.  Then, just last week, the Board denied a petition to rehear that earlier decision.  These decisions in Premier Gem Corp. et al. v. Wing Yee Gems & Jewelry Ltd. (IPR2016-00434) demonstrate how failing to introduce into evidence the details of the prior art can be fatal to a claim of anticipation or obviousness. They also offer a reminder that challenged designs and the prior art are to be compared on the basis of “overall visual appearance,” not mere “design concepts.”

Petitioners Premier Gem Corp. and Jay Gems Inc. (collectively, “Petitioner”) petitioned the Board to invalidate U.S. Design Patent No. D618,132 (the “’132 patent”).  The patent claims a jewelry design in which a large “full cut” central diamond is surrounded by nine smaller “single cut” diamonds.  (As the decision explains, “[f]ull-cut diamonds have more facets than single-cut diamonds, and typically produce a greater sparking effect.”)  The two figures of the patent are reproduced below:

U.S. Design Patent. D618,132

Tuesday, October 4, 2016

Apple v. Samsung - Preview of Upcoming Oral Arguments before the Supreme Court of the United States

After a brief hiatus, nothing helps to kickstart the Ordinary Observer blog like another episode in the Apple v. Samsung saga. This installment, of course, takes place at the Supreme Court with next week’s oral arguments on the all-important apportionment issue. For those who are casually following the case or just need a refresher, we summarize the party positions and key amicus briefs after the jump. We’ll also be reporting from the Court next week so stay tuned for a first-hand account of the arguments and predictions from the courthouse steps next Tuesday.

Thursday, July 21, 2016

Continuation-in-Part Design Patent Applications

Deciding when and under what circumstances a design patent application can claim priority to an earlier filed application can be a challenging task. In particular, we often get asked whether a design patent application may be filed as a continuation-in-part (CIP) of an earlier filed design patent application. While the quick answer is yes, the disadvantages associated with CIPs often outweigh the benefits.

Tuesday, May 3, 2016

Design Patent Destinations - Hague Seminar to be Presented by WIPO in Geneva

If you're looking to travel and learn about international design patent application regimes, then look no further than WIPO's Hague Seminar, which is taking place on June 23 in Geneva, Switzerland.   The stated objectives of the Seminar are to give practical guidance to users when designating the United States of America, Japan or the Republic  of Korea in an international design application and to receive feedback from those Offices as Designated Contracting Parties.  You can access WIPO's brochure for the seminar here.

WIPO's Hague Convention seminar comes at an important point in the United States' adoption of the Hague Convention.  While the Hague Convention filing process has been available in the United States since May of 2015, surprisingly few applicants have applied for an International Design Patent through the United States Patent Office, as we learned this year at Design Day.  While the Hague Convention certainly presents a more streamlined and cost-effective approach to international design registration, uncertainty regarding regional differences in design practice may be slowing the adoption of the system here in the United States.  Hopefully, the WIPO seminar in June can help provide a clearer path for U.S. filers.

Monday, April 25, 2016

Sport Dimension v. Coleman Company - Federal Circuit Seeks to Clarify Functionality

Last week, the Federal Circuit issued an opinion in Sport Dimension, Inc. v. The Coleman Company, Inc., No. 15-1533 (Fed. Cir. Apr. 19, 2016), seeking to clarify how courts may properly construe design claims containing significant functional aspects.  The court's decision adds some weight behind last year's Federal Circuit decision in Ethicon Endo-Surgery, Inc. v. Covidien, Inc., and answers a few additional questions related to design patent functionality.

In order to explain this case, we first have to see the problem.  To do that, we begin by looking back to the Federal Circuit's 2010 decision, Richardson v. Stanley Works, Inc.  That case concerned design patent D507,167 for a multi-function tool, and an alleged infringing tool designed by Stanley, as shown below:

Wednesday, April 20, 2016

Design Day Report from the Front Lines Slides

We've had a few requests for the slides from yesterday's Design Day - Report From the Front Lines presentation.  We're happy to share them with the usual disclaimers.  This presentation was prepared for educational purposes only and does not represent the opinions of either the U.S.P.T.O. or Lando & Anastasi.  Nor can we guarantee the accuracy of the underlying data presented, which was gathered from third party sources.

Here is a link to view and download the slides.

If you re-post or use the slides, please be sure to give credit to William Seymour of Lando & Anastasi, LLP and the Ordinary Observer design patent blog.


Monday, April 18, 2016

USPTO Requests Comments on Proposed Written Description Guidance for Design Patents

The United States Patent and Trademark Office has issued a Request for Comments on its proposed guidance to patent examiners regarding the written description requirement in Section 112 of the Patent Act with respect to design patents.  The proposed guidance would address situations where an amended or continuing application claims only a subset of the elements disclosed in an earlier or original application.  In other words, in the example below, if the original claim comprised the images on the left, can the amended claim cover only the subset of elements shown in solid lines on the right?

Wednesday, January 27, 2016

(Future) Motion for Temporary Restraining Order Granted

The annual Consumer Electronics Show (CES) provides a highly publicized venue for companies to showcase their cutting-edge technology and innovative designs.  Just days before this year’s show in Las Vegas, NV, one design patent owner prevented an alleged infringer from distributing, promoting, and offering to sell potentially infringing products.  Follow the jump to learn why an emergency temporary restraining order was granted to the design patent owner without an opportunity for the defendant to appear.

Tuesday, January 19, 2016

Design Patent Figures with 3D CAD Software

Similar to a utility patent, a proper design patent application will include (among other components) a description of the design, a claim, and one or more drawings or photographs. Since the drawing disclosure is often considered the most important element of the application, a great deal of care is generally taken when preparing the drawings. For instance, many applicants will enlist the assistance of a draftsman to prepare “formal” drawings. However, the service of a draftsman can be expensive, and we often get asked if there are alternative ways to prepare drawings. In particular, the question is often raised: can 3D CAD images, such as those prepared with SolidWorks, be used to satisfy the drawing requirement? Follow the jump for an answer and analysis.