tag:blogger.com,1999:blog-28970508139096078512024-03-04T23:22:28.593-05:00THE ORDINARY OBSERVERL&Ahttp://www.blogger.com/profile/04783942826331605756noreply@blogger.comBlogger177125tag:blogger.com,1999:blog-2897050813909607851.post-57133575899701168402017-12-05T21:25:00.000-05:002017-12-05T21:26:47.092-05:00<span style="font-family: "times new roman" , "serif"; font-size: 12.0pt;"><span style="color: blue; text-decoration-line: none;"><a href="https://protect-us.mimecast.com/s/27leBVFd4LbHG?domain=r20.rs6.net"><img border="0" src="http://www.lalaw.com/news-events/webinar-hague-international/images/banner-webinar.jpg" height="85" id="_x0000_i1025" style="display: block; margin: 0in; padding: 0in;" width="400" /></a></span></span><br />
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Hands on with the Hague </h1>
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International Design System</h1>
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<strong><em>Everything you need to know to file an International Design</em> <i>Patent</i></strong></div>
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There will be a free webinar discussing the history and implementation of the Hague Agreement governing international design patent protection. The webinar will be presented by patent attorneys from Lando & Anastasi and held tomorrow December 6 at 1:00 PM eastern time. Requirements and pitfalls of filing a Hague design application will be discussed and analyzed. Our panel of distinguished patent professionals will offer attendees strategies for addressing the Hague International Design System as well as updates regarding the latest and significant issues surrounding the topic. Speakers will analyze recent filings and rejections and will also provide the audience with insights that will guide them in overcoming such rejections. Topics to be discussed include:</div>
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• The benefits of the Hague International Design System vs. direct national filings</div>
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• Is there potential for cost savings</div>
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• Lessons learned and traps for the unwary</div>
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• Best practices, strategies and tips</div>
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<b>When</b></div>
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December 6, 2017 1:00 - 2:00 pm EST</div>
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<strong>Presenters</strong></div>
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<a alt="http://www.lalaw.com/people/keith-f-noe/" href="http://www.lalaw.com/people/keith-f-noe/" style="color: #cc6600; text-decoration-line: none;">Keith F. Noe</a>, Partner, Lando & Anastasi, LLP. Keith has over twenty-five years of experience in private practice and as in-house patent counsel.Keith has expertise in all areas of intellectual property, including strategic counseling, extensive patent and trademark prosecution, global design patent prosecution and negotiation of licensing, joint venture and other transactional agreements.</div>
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<a alt="http://www.lalaw.com/people/alex-e-breger/" href="http://www.lalaw.com/people/alex-e-breger/" style="color: #cc6600; text-decoration-line: none;">Alex E. Breger</a>, Associate, Lando & Anastasi, LLP. Alex focuses his practice on a wide range of intellectual property services including preparing and prosecuting utility and design patent applications, trademark prosecution and litigation, licensing, managing global portfolios for corporations ranging from start-ups to multinational corporations, and counseling clients on a range of other business and intellectual property-related issues around the world.</div>
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<a alt="http://www.lalaw.com/people/alex-e-breger/" href="http://www.lalaw.com/" style="color: #cc6600; text-decoration-line: none;" target="_blank">Kelly A. Petrillo</a>, Foreign Filing Paralegal, Lando & Anastasi, LLP. Kelly has extensive experience in PCT and Hague filings, as well as in the filing and prosecution of direct foreign applications globally.</div>
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<b style="color: #333333; font-family: Arial, Helvetica, sans-serif; font-size: 14px;">Click the link below to Register Now!</b></div>
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<span style="color: #333333; font-family: "arial" , "helvetica" , sans-serif;"><span style="font-size: 14px;"><a href="https://intercall.webex.com/intercall/j.php?MTID=mf1ae1a66329e618f67ab0c1ab898d61d" target="_blank">https://intercall.webex.com/intercall/j.php?MTID=mf1ae1a66329e618f67ab0c1ab898d61d<b> </b></a></span></span></div>
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Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-44214745291428069902017-08-30T09:00:00.000-04:002017-08-30T09:00:11.794-04:00District Court Mulls Design Patent Damages – Apple v. Samsung on Remand<div dir="ltr" style="text-align: left;" trbidi="on">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjiclokfwTpz3HOYyGpL5paAunixMfqljnmrh5lIQyiygGw0vCDFBzz76f3dfw_iu9m8WKUi4ESacQXZ4wX3Ud4pYUMptyI9DeDJKtojiR57yRlvZAT2YZEYy1mAvJMp4VkQvdrBG3ELHQB/s1600/apple-vs-samsung.jpg" imageanchor="1" style="clear: left; float: left; margin-bottom: 1em; margin-right: 1em;"><img border="0" height="133" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjiclokfwTpz3HOYyGpL5paAunixMfqljnmrh5lIQyiygGw0vCDFBzz76f3dfw_iu9m8WKUi4ESacQXZ4wX3Ud4pYUMptyI9DeDJKtojiR57yRlvZAT2YZEYy1mAvJMp4VkQvdrBG3ELHQB/s200/apple-vs-samsung.jpg" width="200" /></a><b style="text-align: justify;"><i>Editor's Note: The following guest post was authored by <a href="http://www.lalaw.com/people/thomas-p-mcnulty/">Thomas P. McNulty</a>, Counsel at <a href="http://www.lalaw.com/">Lando & Anastasi LLP</a>. </i></b><br />
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In last year’s <i>Samsung v. Apple</i> decision, the Supreme Court held that the “article of manufacture” for which total profits are awarded upon a finding of design patent infringement may be either “a product sold to a consumer [or] a component of that product.” The Supreme Court declined to establish the test for identifying the article of manufacture, instead remanding for consideration by the court below.<br />
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Given that the Supreme Court substantially changed the interpretation of damages under 35 U.S.C. § 289, it would seem clear that a new damages trial would be required. Nothing in litigation, however, is so simple. Instead, upon remand, the district court considered the parties positions on whether a new trial is warranted. In the meantime, we will examine the procedural questions addressed by the district court in connection with its order requesting further briefing. <br />
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Apple first argued that Samsung had waived its right to a new trial on damages by failing to properly and timely object to the exclusion of its “article of manufacture” theory. This argument seemed strange, given that Samsung had appealed the damages decision to the Federal Circuit and then to the Supreme Court – wouldn’t Apple have waived its waiver argument by not having raised it above? In any event, the district court found that Samsung had raised its article of manufacture theory in its trial brief and again in a motion for judgment as a matter of law and had objected to the court’s refusal to instruct the jury on its damages theory. In light of this, the district court determined that Samsung had not waived its right to seek a new trial. <br />
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The court next considered whether the instructions that it actually gave the jury were sufficiently out of tune with the Supreme Court’s decision on damages as to constitute legal error. At trial, the court had instructed the jury:<br />
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If you find infringement by any Samsung defendant and do not find Apple's design patents are invalid, you may award Apple that Samsung defendant's total profit attributable to the infringing products. The “total profit” of Samsung Electronics Company, Samsung Electronics America and/or Samsung Telecommunications America means the entire profit on the sale of the article to which the patented design is applied, and not just the portion of profit attributable to the design or ornamental aspects covered by the patent… If you find infringement by any Samsung defendant, Apple is entitled to all profit earned by that defendant on sales of articles that infringe Apple's design patents.</blockquote>
The district court determined that this instruction failed to adequately inform the jury that it could award damages based on a product sold to a consumer or a component of that product,” and instead would direct a jury to find that the article of manufacture and complete product are the same. The court further found that Samsung’s proposed instruction, stating that “the article to which Apple's design was applied may be the same as or different from Samsung's devices as sold because devices offered for sale may incorporate a single article of manufacture or several articles of manufacture,” would have corrected this error, and concluded that the jury instruction did constitute legal error.<br />
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Apple next argued that a new trial is not necessary because no evidence was presented as to Samsung’s profits on an article of manufacture that was less than the whole Samsung phone, meaning that Samsung could not prove lower profits than those awarded at the first trial. Apple acknowledged that, as the patentee, it bears the burden of proving damages, but contended that the burden of proving damages once the article of manufacture was found to be less than the full product was not clear. Here, the district court noted that, if Samsung bore the burden of proving its profits on less than a full phone, the refusal to provide Samsung’s proposed instruction might have been acceptable because Samsung might have been unable to point to evidence of such damages. In other words, if Samsung was required to prove profits on less than the full phone, the legal error in the jury instructions might have been harmless, because the evidence did not allow Samsung to prove lower damages.<br />
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The district court deferred on deciding whether a new trial is warranted, and instead requested additional briefing on the following issues:<br />
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<li>the proper test for identifying the article of manufacture;</li>
<li>whether the identification of an article of manufacture a factual question, a legal question, or a mixed question of law and fact;</li>
<li>allocation of the burden of proving the relevant article of manufacture; and</li>
<li>allocation of the burden of proving total profits on the article of manufacture. </li>
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Briefing on these issues is to be completed by the end of September, with a hearing scheduled for October 12, 2017. </div>
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Eric Carnevalehttp://www.blogger.com/profile/02268102785853628646noreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-45180217918167302172017-04-28T13:00:00.000-04:002017-04-28T13:00:10.272-04:00A Look at Motions for Judgment on the Pleadings in Design Cases<div dir="ltr" style="text-align: left;" trbidi="on">
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Design patents infringement cases tend to be particularly amenable to motions for judgment on the pleadings pursuant to Rule 12(c) of the Federal Rules of Civil Procedure. Where no material facts are disputed, there may be situations where a claimed design and accused design are sufficiently distinct that it would be clear from the complaint, answer and accompanying exhibits that the patentee would not be able to meet its burden of proving the two designs would be "substantially the same" to an ordinary observer. In those cases, judges are entitled to enter judgment as a matter of law disposing of the case without the burden or expense of discovery, experts or a jury trial. But the fact that judges are capable of rendering judgment on the pleadings early in the case does not imply that they frequently do so. Nor does it imply that motions for judgment on the pleadings in design patent cases are necessarily meritorious. It is worth examining recent cases in which Rule 12(c) motions have been raised to consider just how likely these motions are to be brought in clear cases and whether judges are willing to cut clear cases off at the knees. </div>
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Over roughly the past four years, we have identified design patent infringement cases that have reached a decision on motions for judgment on the pleadings. Two of the motions were granted, and two were denied. The decisions reveal an interesting spectrum in terms of both the motions and the decisions reached.<br />
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At one clear end of the spectrum is <i>Anderson v. Kimberly-Clark Corporation</i>, brought in 2012 in the Western District of Washington and dismissed on a judgment on the pleadings on September 25, 2013. Muffin Faye Anderson was the owner of a design patent directed to an absorbent disposable undergarment as shown above and to the left. She asserted her patent against a number of products produced by Kimberly-Clark, including the adult diapers shown above and to the right. The district court granted Kimberly-Clark's motion for judgment on the pleadings based on a side-by-side comparison of the products, which it concluded were plainly dissimilar. Indeed, the only <i>similarity</i> between the products identified by the Court was that they were both disposable barriers to protect the wearer from incontinence, which was a purely functional consideration with no weight in a design patent infringement analysis.<br />
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The remaining cases tend to present closer questions. In a 2014 decision in <i>Poly-America, L.P. v. API Industries, Inc.</i>, Judge Robinson in the District of Delaware denied a motion for judgment on the pleadings upon a finding that the claimed design for a six-sided box, shown above to and to the left, was not plainly dissimilar to the accused product box shown above and to the right. API had attempted to highlight three differences between its product and the claimed design, including: (a) the accused design had an opening that extends beyond the front panel of the box to the side panel; (b) the accused design had no top flaps with no tabs and no slots; and (c) the accused design had bottom flaps rather than a solid bottom. API further supported its argument with evidence of prior art boxes having similar perforated openings, as proof that an ordinary observer with knowledge of the prior art would view the claimed and accused designs as plainly different. Judge Robinson found these arguments unavailing. Given the same general appearance of the claimed box and the accused product, the court could not find as a matter of law that the designs were plainly dissimilar. <br />
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which was heard again on a motion for reconsideration, the court was unwilling to declare as a matter of law that the overall visual differences between the defendant’s design and the patented design are greater than the differences between the patented design and the prior art. The court concluded that there was an issue of fact to be decided upon consideration of all of the evidence.</div>
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Judge Bumb in the District of New Jersey reached a similar conclusion in the case of <i>C&A Marketing, Inc. v. GoPro, Inc.</i>, in 2016. There, GoPro moved for judgment on the pleadings on the basis that its mountable camera, shown above and to the right, was plainly dissimilar to C&A's camera, shown above and to the left, marketed as the Polaroid Cube. GoPro called attention to a number of differences between the claimed and accused designs, highlighted in various colors, above. But the court held that “unless it is so obvious on the face of the pleadings that there is no infringement, this court should have the benefit of an evidentiary record which includes an actual inspection of the devices at issue.” The court also was cognizant of the fact that C&A had alleged actual confusion by consumers, who, of course, were ordinary observers.<br />
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<i>Young v. Stone </i>presents a more interesting decision. That action was filed in the U.S. District Court for the Northern District of Illinois in 2013, and was dismissed pursuant to Rule 12(c) on August 28, 2014. The case concerned Roger Young's patented design for a golf putting practice simulator, and the defendant's accused putting simulator, as shown above. The court performed an extensive claim construction that identified a number of functional elements, including the spaced upper and lower disks designed to trap a golf ball, but held that the flag pole was ornamental. The court keyed in on several relatively minor differences between the accused product and the patented product, such as the fact that claimed design used a raised washer to trap the ball, while the accused design relied on a sloped lower disk. These differences, among others were "so plainly dissimilar that [Stone was] entitled to judgment as a matter of law." </div>
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While the sample size is small, some trends from these cases tend to stand out. <i>Young </i>and <i>Anderson</i>, the two cases in which judgment on the pleadings was granted, involve individual rather than corporate patent owners. Indeed, Anderson was a pro se plaintiff. The outcomes of those cases, and at least in <i>Anderson </i>the question of whether the case should have been brought in the first place, may suggest the value of sophisticated design patent counsel. Also, while these cases tend to demonstrate an expected reticence from judges at the early stages of the case, <i>Young </i>is at least some evidence that it can be worthwhile for defendants to take a risk at getting a quick resolution. The right judge, and possibly even the right subject matter, may be all that is required to turn a close case into a clear victory.<br />
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Rule 12(c) motions remain a powerful, even if underused tool for design patent defendants. It will be interesting to see if, <a href="http://www.theordinaryobserver.com/2016/12/supreme-court-sides-with-samsung-on.html">in view of recent shifts in that law that affect the damages recoverable by design patent plaintiffs</a>, we will be more likely to see prompt decisions in these cases, or less.<br />
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<i>This post was written by Keith F. Noe, a partner at Lando & Anastasi. Support was provided by Eric P. Carnevale</i></div>
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Eric Carnevalehttp://www.blogger.com/profile/02268102785853628646noreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-33193345219461762152017-03-24T19:56:00.000-04:002017-03-24T19:56:28.621-04:00Supreme Court Finds Cheerleader Uniform Designs Copyrightable<div dir="ltr" style="text-align: left;" trbidi="on">
<a href="http://www.theordinaryobserver.com/2016/10/the-intersection-of-copyrightable-works.html">Last fall, we examined the case of <i>Star Athletica, L.L.C. v. Varsity Brands, Inc.</i></a>, then pending before the Supreme Court on the question of whether the design of a cheerleader uniform is copyrightable subject matter, or if it is a useful article. In a 6-2 decision, the majority laid out a new test for analyzing the separability of designs applied to useful articles, and further found that the cheerleader uniform designs at issue in this case were protectable works under that test. This decision grants expansive rights to authors who apply designs to utilitarian objects, but as we will see below, the new test is far from free of ambiguity. <br />
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First, let us briefly recap the dispute before the Court. Varsity Brands is the owner of several copyright registrations for "two-dimensional artwork," such as the one shown above, related to cheerleader uniforms. Varsity brought suit against Star Athletica when it realized that Star was selling uniforms with a striking similarity to five of its registered designs.<br />
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Star defended on the basis that the designs for cheerleader uniforms are useful articles and therefore not copyrightable subject matter. Under Section 101 of the Copyright Act, the design of a useful article is copyrightable "only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." Star contended that the arrangement of stripes, colored panels and chevrons were essentially functional, identifying the wearer as a cheerleader, and in at least some cases helped make the wearer's waist appear narrower or their torso longer. Additionally, while sometimes the designs were merely printed on the fabric of the uniform, in other cases colored fabric panels were cut into shape and physically stitched together to create the uniform. Thus, the design of the uniform was inseparable from the uniform itself.</div>
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The district court found in favor of Star. But the Court of Appeals for the Sixth Circuit reversed, holding that the designs of the uniforms were copyrightable because they were conceptually separable from the useful articles to which they were applied.</div>
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The case highlighted an increasing problem in the application of the Copyright Act's separability doctrine. The appellate court identified nine distinct separability tests used by various courts and the copyright office. What's more, case law tended to suggest that courts could pick and choose any number of tests to reach essentially any conclusion they wanted, even if several other tests would have reached a different result. So, rather than pick a winner from among the bunch, the Sixth Circuit created a tenth test, and applied that. That brought the case to the attention of the Supreme Court, who took it up to decide which test, if any, was meant to carry the day.</div>
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The Supreme Court concluded that the Copyright Act prescribed a two-part test. A design of a useful article is eligible for copyright protection if it:</div>
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(1) can be identified separately from, and (2) is capable of existing independently of the utilitarian aspects of the article.</blockquote>
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The first part only requires the decision maker to spot some two or three dimensional element that has pictographic or sculptural qualities. The focus of the inquiry is therefore on the second part, and that is whether the identified features are able to exist as their own pictorial, graphic or sculptural work once they are removed from the article. In other words, would the claimed features have been eligible for copyright protection had they been fixed in some other tangible medium before being applied to the useful article? </div>
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Under its newly articulated test, the Court found the claimed designs were copyright-eligible. The court identified the chevrons, color panels and decorations on the cheerleader uniforms as having pictorial, graphic or sculptural qualities, and it found that the identified features could applied to another medium, say a painter's canvas, without replicating the uniform itself. Here, for example, Star had provided evidence of the registered designs applied to other articles of clothing, such as windbreakers.</div>
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The majority also explained what the test <i>does not</i> require. Star and some of the <i>amici</i> had argued that the uniforms should remain similarly or identically useful in the absence of the claimed design. But the Copyright Act expressly protects "applied art," which necessarily includes art that has some practical use. There is no requirement that the useful article must remain once the artistic features have been removed. Star also argued that test should consider whether the design elements reflected the designer's artistic judgement, or whether the separable features would still be marketable without their utilitarian function. But the majority found these considerations had no basis in the statute. Finally, Star argued that Congress intended to exclude industrial designs from copyright protection in favor of design patents. But the majority held that copyright and design patents need not be mutually exclusive. </div>
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The majority's test is simple, broad, and appears to mostly restate the statutory language in slightly different terms. But that is not to say it is necessarily clear. And even if it is clear, what matter would it actually exclude from copyright protection?<br />
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That question was taken up by Justices Breyer and Kennedy in dissent. While they did not disagree with the majority's test, they would have applied it to reach the opposite result. The registered designs are pictures of cheerleader uniforms, and cheerleader uniforms are useful articles. Thus, Justice Breyer quotes the majority:<br />
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A picture of the relevant design features, whether separately "perceived" on paper or in the imagination, is a picture of, and thereby "replicate[s]", the underlying useful article of which they are a part.</blockquote>
The dissent's problem with the majority's separability test is that there is not much in the world that could not be "imaginatively reproduced on a painter's canvas." Copyright protection was never meant to extend to any object you can put a frame around and hang in a gallery. Court's have, for example, denied protection to measuring spoons shaped like heart-tipped arrows and candle holders shaped like sailboats. And while these objects likely had artistic aspects that could be identified separately from the utilitarian object and reproduced pictorially, "one could not easily imagine or otherwise conceptualize the design of the shoes or the candleholders . . . <i>without that picture, or image, or replica being a picture of spoons or candleholders</i>. . . ." <br />
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The problem with the dissent's approach is that the copyrightability of a design applied to a useful article would all too often depend on the form in which the design reached the Copyright Office. If an applicant sought to register a sketch of a cheerleader wearing a uniform bearing certain design, that sketch would not extend protection to a real-life uniform because it would be too difficult to separately conceptualize the design without the uniform. But, if perhaps an applicant sought to register a rectangular canvas on which they had drawn colored panels, stripes and chevrons, then that design would be copyright-eligible even when it is silk-screened onto a cheerleader uniform. The fact that a design appeared first in the form of a cheerleader uniform should not alter the copyright-eligibility of the design itself. <br />
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Ultimately, while the majority has resolved ten separability tests into one, it does not appear to have addressed the reason why the problem arose in the first place. The majority's test closely reflects the statutory language. But the very reason that court created ten separability tests is that the statute was not clear. It did not provide enough guidance to allow courts to draw bright lines between what is eligible for copyright protection, and what is not. The best evidence of that may be the fact that both the majority and dissent purport to apply the same statutory test, but reach opposite conclusions. <br />
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However, for design patent owners, this opinion provides powerful tools. The Court made it clear that design patents and copyrights on designs applied to useful articles are not mutually exclusive. To the extent any patented design could be imagined separately from the useful article to which it is applied, it may be eligible for copyright protection. </div>
Eric Carnevalehttp://www.blogger.com/profile/02268102785853628646noreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-43985212565687177282016-12-06T22:03:00.002-05:002017-03-24T16:57:48.536-04:00Supreme Court Sides with Samsung on Design Patent Damages<div dir="ltr" style="text-align: left;" trbidi="on">
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. <br />
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Prior to this appeal, Apple had been awarded $548 million in damages for Samsung’s infringement of U.S. design patents D593087, D604305, and D618677 as applied to various Samsung smartphones and tablets being sold in 2011. The calculation of damages was based on Samsung’s total U.S. profits earned in connection with the products at issue. Samsung and amici successfully argued before the Supreme Court that the patents at issue were only relevant to certain specific smartphone components and that the “article[s] of manufacture” used to calculate profits should be limited to those select components only, not the entire smartphone. Accordingly, the validity of $399 million out of the original $548 million damage award has been remanded to the Federal Circuit in light of this new ruling. <br />
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The Supreme Court’s ruling raises a number of issues concerning the scope of judicial review vis-à-vis legislative intent and equitable remedies. Specifically, the Supreme Court’s 1885 decision in Dobson v. Hartford Carpet Co. held that design patent holders can recover “actual damages sustained” from infringement. Two years later, Congress passed the Patent Act of 1887 introducing what is now § 289 and abrogating Dobson. In addition to being enacted in response to Dobson, § 289 was also designated as an equitable remedy, meaning it is not subject to the causation requirements inherent in conventional damage calculations. A discussion or mere mention of either issue is strangely absent from the opinion! The Court’s reliance on a separate statute (§ 171) is not unprecedented, but it is unusual considering the lack of any discussion on legislative history or the status of § 289 as an equitable remedy.</div>
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If anything, the Supreme Court’s decision appears to be based less on well-established principles of judicial review and more on the complexities associated with modern technological products. It is unlikely that Congress in 1887 could have envisioned products as multifaceted and advanced as smartphones, and thus the Supreme Court appears to be making somewhat of a hindsight judgment as to the meaning of § 289 in view of modern day results. Either way, it is clear that this ruling will adversely affect the value of design patents in many instances. <br />
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The ruling also provides no specific test for determining which particular components of a multicomponent product constitute the “article of manufacture” under § 289. The Federal Circuit is now charged with formulating such a test when it hears this case on remand. Whatever test the Federal Circuit decides on, it is likely to be fact-intensive and render design patent damage issues more complex and expensive to litigate going forward. Congress also has the power to pass legislation reinforcing this decision, reversing this decision, or introducing a new set of rules for design patent damages.<br />
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Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-27047531822301598322016-11-14T09:00:00.000-05:002017-03-30T16:58:18.376-04:00District Court Relies on Prosecution History Estoppel in Judgment on the Pleadings<div dir="ltr" style="text-align: left;" trbidi="on">
Two years ago we reported on the landmark Federal Circuit decision in <i>Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC</i>, holding for the first time that <a href="http://www.theordinaryobserver.com/2014/01/federal-circuit-alert-pacific-coast.html">the doctrine of prosecution history estoppel applied to design patents</a>. 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 <i>discrete</i> 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.<br />
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Last week, prosecution history estoppel was successfully invoked in a district court case.</div>
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh7VXJFgaIby8uiIBqQa6HVF-icSEcJSBcTX3GBM2rypZBv26a9nERdDDMIw6ESzYOk_hJGmnHiOdk2icb_lq3a0nEF2OIvJbgeokx1uJwo2ddG8bZTDOl8Rks5dKuFZCccJF2kQfvuknkJ/s1600/Patent+And+Accused.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em; text-align: center;"><img border="0" height="213" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh7VXJFgaIby8uiIBqQa6HVF-icSEcJSBcTX3GBM2rypZBv26a9nERdDDMIw6ESzYOk_hJGmnHiOdk2icb_lq3a0nEF2OIvJbgeokx1uJwo2ddG8bZTDOl8Rks5dKuFZCccJF2kQfvuknkJ/s400/Patent+And+Accused.png" width="400" /></a></div>
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<a name='more'></a>In <i>Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co.</i>, Judge Real for the U.S. District Court in the Southern District of California granted a motion for judgment on the pleadings, finding that the Plaintiff's claims for infringement of U.S. Design Patent No. D715,006 were barred by the doctrine of prosecution history estoppel.<br />
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Advantek's pet gazebo, shown above and to the left, was one of two embodiments originally recited in the application that matured into the D'006 Patent. The other embodiment, which was withdrawn by the applicant following a restriction requirement, is shown below:<br />
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Shanghai, who manufactured the "pet companion product" shown at the top of this article to the right, moved to dismiss the complaint under Rule 12(b)(6) for failure to state a claim upon which relief could be granted. Judge Real granted Shanghai's motion in a terse, four-page opinion, holding that the accused product was "exactly the same as the design surrendered" by Advantek. </div>
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This case should stand as a stern warning to practitioners and applicants when submitting applications for design patents having multiple embodiments. Any embodiment withdrawn from one application, and not pursued in a related application, may be available to competitors as a <i>prima facie</i> non-infringing design. It will be interesting to see if, in view of <i>Pacific Coast</i> and cases such as this, potential competitors begin looking to the prosecution history of patented designs for disclaimed embodiments that they know will avoid infringement. </div>
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Eric Carnevalehttp://www.blogger.com/profile/02268102785853628646noreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-12425467314521492192016-10-20T17:00:00.000-04:002017-03-22T12:17:06.593-04:00The Intersection of Copyrightable Works and Useful Articles at the Supreme Court<div dir="ltr" style="text-align: left;" trbidi="on">
While most of the design patent world is focused on the Supreme Court's review of the <i>Apple v. Samsung</i> case, which we reported on last week, the Supreme Court is also set to hear oral arguments on <span style="font-style: italic;">Star Athletica, LLC v. Varsity Brands, Inc.,</span> a copyright case that could have implications for the scope of rights available to design owners.<br />
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjqKi8ZuInAkvRdutGGvtE5QEBQiUA3jGYnMQpqB6QUZty3gnXS2WiF0stm4CgHS9XZmdW-k3r477ndy11lXwQII-Ji8ISJ1lsB6V-DrrRCnGZ4er7-iWgh7MT0DYEFLHp1-q8h7_-kPYgt/s1600/Design+078.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="320" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjqKi8ZuInAkvRdutGGvtE5QEBQiUA3jGYnMQpqB6QUZty3gnXS2WiF0stm4CgHS9XZmdW-k3r477ndy11lXwQII-Ji8ISJ1lsB6V-DrrRCnGZ4er7-iWgh7MT0DYEFLHp1-q8h7_-kPYgt/s320/Design+078.png" width="263" /></a></div>
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<a name='more'></a>Varsity Brands designs and manufactures athletic apparel, including cheerleading uniforms. Their design process typically involves having a draftsman or a designer sketch out ideas on paper. Once approved, those sketches are given over production crew, whose job it is to re-create the design in fabric for production. Some designs may simply be screen printed onto existing fabric, but others are implemented by stitching together fabric panels in the required shape. Many of the sketches, such as the one shown above, are filed with the copyright office as "two dimensional artwork."<br />
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Star also markets and sells athletic uniforms, including for cheerleading. Varsity sued Star in Tennessee after noticing that its uniforms looked very similar to five designs Varsity had previously registered. Star defended by arguing that Varsity's copyrights were invalid as being directed to useful articles, which are not copyrightable. The district court agreed, and granted Star's motion for summary judgment. <br />
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On appeal to the Sixth Circuit, Varsity argued that its designs were copyrightable, because they were conceptually separable from the articles themselves. The appellate court agreed, and vacated the district court's dismissal. Star filed a writ of <i>certiorari</i>, which the Supreme Court granted on May 6, 2016. <br />
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The question taken by the Supreme Court is deceptively straightforward:<br />
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What is the appropriate test to determine
when a feature of a useful article is
protectable under § 101 of the Copyright Act? </blockquote>
In order to understand why this is such an important and difficult question, we have to look deeper into the dispute.<br />
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Copyright law is intended to protect creative works, not functional or utilitarian ones. Patent law is the proper province of utilitarian inventions, and design patents form the bridge protecting the ornamental aspects of articles of manufacture. But even the Copyright Act recognizes there is some overlap, as explained in the Section 101:<br />
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“Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned;<b> the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article</b>.</blockquote>
In short, a copyrightable "pictorial, graphic or sculptural" work can be <i>applied</i> to a useful article, but it cannot cover any mechanical or utilitarian aspects of that article. With respect to clothing, the <i>amicus</i> brief for the United States provides a good example:<br />
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In the image above, the owner of the copyright for Van Gogh's Starry Night would have the exclusive right to print that work on a dress. However, the shape, cut and style of the dress would be a utilitarian article, and would not be protectable under copyright law.</div>
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But consider the cheerleading uniform shown at the top of this post. Design elements such as the stripped trim appear to follow the shape and cut of the uniform. Varsity admits that in at least some cases, the design is not merely <i>applied</i> to the uniform, but individual colored panels are cut to the appropriate shape and stitched together. In a case like that, is the design truly separable from the article of manufacture it is associated with?</div>
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The answer may depend on which test the court uses to gauge conceptual separability. The Sixth Circuit identified nine distinct tests, including:</div>
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<b>The Copyright Office’s Approach</b>: “A pictorial, graphic, or sculptural <span style="text-align: justify;">feature satisfies [the conceptual-separability] requirement only if the artistic </span>feature and the useful article could both exist side by side and be perceived as fully realized, separate works—one an artistic work and the other a useful article.” COMPENDIUM III § 924.2(B).</blockquote>
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<b>The Objectively Necessary Approach</b>: A pictorial, graphic, or sculptural feature is conceptually separable if the artistic features of the design are not necessary to the performance of the utilitarian function of the article.<i> Carol Barnhart, Inc. v. Economy Cover Corp.</i>, 773 F.2d 411, 419 (2d Cir. 1985).</blockquote>
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<b>The Ordinary-Observer Approach</b>: A pictorial, graphic, or sculptural feature is conceptually separable if “the design creates in the mind of the ordinary[, reasonable] observer two different concepts that are not inevitably entertained simultaneously.” <i>Id.</i> at 422 (Newman, J., dissenting).</blockquote>
One might imagine we at The Ordinary Observer are partial to one of the above-listed approaches over the others, but the truth is that no one test appears to fully capture conceptual separability, and courts frequently use multiple tests in justifying their opinions one way or another. It should not be difficult to imagine how the whole analysis essentially boils down to a You Know It When You See It Approach, which is little comfort to parties arguing close cases. Given the Supreme Court's disdain for bright line rules (<i>e.g.</i> "total profits"), we would not be surprised to see a decision giving wide latitude to district court judges in this regard.<br />
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The Sixth Circuit rejected all nine of the tests it identified in favor of a tenth, which asks courts to analyze the question in five sequential steps:<br />
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<li>Is the design a pictorial, graphic, or sculptural work?</li>
<li>If the design is a pictorial, graphic, or sculptural work, then is it a design of a useful article?</li>
<li>What are the utilitarian aspects of the useful article?</li>
<li>Can the viewer identify the pictorial, graphic, or sculptural features separately from the utilitarian aspects of the useful article? And finally,</li>
<li>Can the pictorial, graphic, or sculptural features of the useful article exist independently of the utilitarian aspects of the useful article?</li>
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The relative merit of the Sixth Circuit's approach need not be analyzed here. It stands shoulder to shoulder with its nine older siblings, and it will be for the Supreme Court to decide if there is a favorite child among the bunch, or if an eleventh and final approach will be the answer. What the Court decides will help shape the intersection of design patents and copyright law, and the extent to which designers, including fashion designers, are capable of protecting the creative and ornamental aspects of their products. </div>
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We will keep you apprised of this case, as it develops. </div>
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Eric Carnevalehttp://www.blogger.com/profile/02268102785853628646noreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-1061646572649872862016-10-17T20:43:00.001-04:002016-10-17T20:48:05.156-04:00Courtroom Sketches from Apple v. SamsungAs a follow-up to last week's post, we wanted to share the courtroom sketches from <i>Apple v. Samsung</i> that were graciously provided by Art Lien of <a href="http://courtartist.com/">courtartist.com</a>. Art really captured the look of confusion on the Justices' faces...<br />
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<br />Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-46881612376784731982016-10-11T11:52:00.000-04:002016-10-11T12:19:12.052-04:00Eight Telling Quotes from Apple v. Samsung Oral Arguments<div class="separator" style="clear: both;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgsGEEbNDe7JDmWWo7eb43QqBe2GuZs3-TlX5Q8KaWkz2tg0Le9rKz1z7uO71Kpzn-1H4qCP6Y9O9cgNq2z1tN_Oqq9j-ulpYgyVjDYLXnReWXJQehBjpxTPQIz1maHxbO1A8r19vFReBMR/s1600/20161011_082120.jpeg" imageanchor="1" style="clear: left; float: left; margin-bottom: 1em; margin-right: 1em;"><img border="0" height="180" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgsGEEbNDe7JDmWWo7eb43QqBe2GuZs3-TlX5Q8KaWkz2tg0Le9rKz1z7uO71Kpzn-1H4qCP6Y9O9cgNq2z1tN_Oqq9j-ulpYgyVjDYLXnReWXJQehBjpxTPQIz1maHxbO1A8r19vFReBMR/s320/20161011_082120.jpeg" width="320" /></a>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 A<i>pple v. Samsung</i> 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?"</div>
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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.</div>
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<a name='more'></a>Before we get to the quotes, though, we'd like briefly give our take on an issue likely to rear its ugly head today. Recently, much of the discussion surrounding this case has turned to the question of "what constitutes an '<a href="http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2405652" target="_blank">article of manufacture</a>?'" However, this question appears to be a red herring, in our opinion. § 289 states that "whoever ... <b><i>applies</i></b> the patented design ... <i><b>to</b></i> any article of manufacture ... shall be liable to the owner to the extent of his total profit." The reference to an "article of manufacture" in this passage merely defines infringement (i.e. applying a patented design to an article of manufacture). It has no role in defining the scope of the remedy, which uses language exceedingly clear - "total profits." Whatever an "article of manufacture" is or isn't, that question plays no role in the amount of profits disgorged. Once infringement is determined, there is only one, unambiguous remedy under § 289. <br />
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Unfortunately, it looks like the Court largely disagrees, based on the below questions from the Justices (which are quoted as closely as possible, but somewhat paraphrased):</div>
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<i><span style="font-size: large;">"Wouldn't one option here be to allow for a de minimis exception to the total profits rule?"</span> ~ </i><span style="font-size: large;">Justice Kennedy</span></blockquote>
Good idea justice Kennedy! § 289 was intended to be the codification of an equitable remedy. Rather than undoing what Congress deliberately chose to do by outlawing apportionment, just create an exception to the total profits rule for de minimis infringement (e.g. the cup holder in the car scenario) under the Court's inherent equitable powers.<br />
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<span style="font-size: large;"><i>"A consumer could see the article of manufacture as being just the shell [of a VW Bug for example], but your expert never opined on this point."</i> ~ Justice Sotomayor</span></blockquote>
There was a great deal of discussion about the VW Bug design and how a jury would determine whether the article of manufacture there was just the outer shell or the whole car. The Justices seemed to be attacking the sufficiency of Samsung's evidence, even under its own proposed standards, and may be angling to deny the appeal due to waiver of their arguments below. Let's hope.<br />
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<i style="font-size: x-large;">"If we determined that the 'article of manufacture' in any case is just a component, how would we determine the profits on that component?"</i><span style="font-size: large;"> ~ Justice Ginsberg</span></blockquote>
All sides seemed to have conceded that <i><b>total</b></i> profits should be limited to the profits for the article to which the design was applied and that the "article" could be less than the entire thing sold. But nobody had a good model for how to determine attributable profits once a jury makes that threshold determination. The Solicitor General seemed to suggest that attributable profits should simply be determined by calculating the components' proportional share of the costs of the profits and then assuming that the same proportion of profits would be attributable to that component. Since most designs are part of the exterior or housing for most products, such an interpretation has the potential to destroy Section 289.<br />
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<span style="font-size: large;"><i>"Aren't these tests getting close to apportionment? Once you identify 'the article' how is this any different from apportionment?"</i> ~ Justice Kennedy</span></blockquote>
Bingo! Justice Kennedy seems to be the only Justice who understood where Judge Ko was coming from in her decisions below. No matter what you want to call this new "article to which the design is applied" argument, it's really just apportionment in disguise. Judge Koh was right to deny Samsung's repeated attempts to apportion total profits, but sadly, it sounds like the Supreme Court is moving towards apportioning total profits, although I'm sure they will give it a really cute name and some nonsensical factors to thoroughly confuse juries. <br />
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<span style="font-size: large;"><i>"This is an easy case, isn't it? I mean, how is the design applied to the chips on the interior of the phone?"</i> ~ Justice Roberts.</span></blockquote>
Sigh. This is the fundamental problem with the "article to which the design was applied" argument. It is entirely based on notions of damages and causation, whereas 35 U.S.C. § 289 is purely an equitable remedy standing for the proposition that one cannot profit from a thing that infringes. Samsung's phones were found to infringe. Therefore, the total profits from the thing that infringed - the phone - is turned over. Congress never intended judges or juries to determine what <i style="font-weight: bold;">part</i> of the thing infringed. It is simply irrelevant.<br />
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<span style="font-size: large;"><i>"It would make logical sense to me that the Volkswagen body, not the innards are the article of manufacture"</i> ~ Justice Sotomayor</span></blockquote>
I think the fundamental flaw in this type of reasoning is that it reads so much into Section 289 that simply is not there. For example, the statute does not say that the design must be "applied to the entire article." Again it simply defines infringement - applying a design to an article of manufacture - and then sets forth a remedy - total profits. To quote Justice Roberts - "This is an easy case, isn't it?"<br />
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<span style="font-size: large;"><i>"What about the situation where the thing that makes the product distinctive doe not cost much to manufacture or develop, but that turns out to be why the product is so successful. But the government says that should not come into the first part of the analysis (i.e. determining what the underlying article of manufacture is)?" </i> ~ Justice Kagan</span></blockquote>
The Court really struggled with how to determine what the underlying article to which the design has been applied even is. The government takes the position that it is irrelevant whether the design was a driver of overall sales when making this factual determination. The entire Court seemed to be grappling with so-called "nifty" designs. However, this sort of confusion is the precise reason why Congress did away with apportionment in the first place. We do not need <u style="font-weight: bold;">Judges</u> determining which designs are nifty and worthy of "total profits" vs. others that are simply a throw-away component. That is the very reason for the black and white language of Section 289.<br />
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<span style="font-size: large;"><i>"The burden is always on the Plaintiff to prove damages." - </i>Counsel for Samsung </span></blockquote>
I include this quote last, even though it is not from a Justice, because it underscores one of the biggest problems with the oral arguments today. This is not a damages case. It is a case about an equitable remedy, yet I do not believe the word "equity" was spoken at all today. Unfortunately, the oral arguments in <i>Apple v. Samsung</i> suggests that Section 289 will be reinterpreted according to damages principles and much of Congress's intent will likely be lost. I, for one, am holding out hope that Justice Kennedy can slam on the brakes before Section 289 is reinterpreted and that Justice Thomas (who asked no questions) has a good understanding for the equitable underpinnings of Section 289.<br />
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We will wait and see what the Court does with this case and will report back just as soon as a decision comes down. <br />
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Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-73240643439958929272016-10-06T15:59:00.000-04:002016-10-06T15:59:04.615-04:00Premiere Gem Corp. v. Wing Yee Gems – Petitioner Turned Down in Diamond Jewelry Design IPRIn July, the Patent Trials and Appeals Board (PTAB) declined to institute <i>Inter Partes</i> 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 <i>Premier Gem Corp. et al. v. Wing Yee Gems & Jewelry Ltd.</i> (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.”<br />
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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:<br />
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<tr><td style="text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEj7imI9XqFLhOGJUM0Mq6-1LMidGy9t3djA1_SNVY-unZSwI2kNZdC6IRvzLmucs-lwf6aHCJG-U7G_iLIUs9HCCGwNRR-7F2CN9LslxVDqB-7jLq9Fnb5VU0GIVCD1twxzQXlnFJgeGJ6a/s1600/Capture.JPG" imageanchor="1" style="margin-left: auto; margin-right: auto;"><img border="0" height="127" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEj7imI9XqFLhOGJUM0Mq6-1LMidGy9t3djA1_SNVY-unZSwI2kNZdC6IRvzLmucs-lwf6aHCJG-U7G_iLIUs9HCCGwNRR-7F2CN9LslxVDqB-7jLq9Fnb5VU0GIVCD1twxzQXlnFJgeGJ6a/s400/Capture.JPG" width="400" /></a></td></tr>
<tr><td class="tr-caption" style="text-align: center;"><b><i>U.S. Design Patent. D618,132</i></b></td></tr>
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<a name='more'></a>The Board explains that, when considering whether a patented design is obvious, one must first determine whether a single primary reference creates “basically the same visual impression” as the patented design. If so, the primary reference may be modified by secondary references to create a design that has the same overall visual appearance as the claimed design. Such a modification may only be applied, however, where the secondary references are “so related to the primary reference” that the appearance of ornamental features in one would suggest their application in the other.<br />
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Here, Petitioner proposed the Lotus Carat, appearing in a number of interrelated publications, as the primary reference. The Lotus Carat features a central, full-cut diamond surrounded by eight smaller diamonds that—unlike the ‘132 patent—are <i>also full-cut</i>, all in a setting including a number of “protrusions” 112:<br />
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<tr><td style="text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiRzg3Dwn9KI4bXAw8delwbErzZDTYr5ccBnmYVPXjPc5D-izVEoOHAbnZ5hS79di45lyKDFWPQTMV9erUQBVQkYB94AdesLkXARO6SGByPofRxemteKXfKIrZ_W6-3zGDTVpEIQzezOAbK/s1600/Capture.JPG" imageanchor="1" style="margin-left: auto; margin-right: auto;"><img border="0" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiRzg3Dwn9KI4bXAw8delwbErzZDTYr5ccBnmYVPXjPc5D-izVEoOHAbnZ5hS79di45lyKDFWPQTMV9erUQBVQkYB94AdesLkXARO6SGByPofRxemteKXfKIrZ_W6-3zGDTVpEIQzezOAbK/s1600/Capture.JPG" /></a></td></tr>
<tr><td class="tr-caption" style="text-align: center;"><b><i>The Lotus Carat (Prior Art)</i></b></td></tr>
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According to Petitioner, the only “relevant, salient” difference between the ‘132 patent and the Lotus Carat was the full cut of the peripheral diamonds in the latter. As such, Petitioner sought to introduce as secondary references a number of jewelry pieces pictured and described in several catalogs. Each of the proposed Secondary References included a central “brilliant cut” (i.e., full-cut) diamond surrounded by a number of single-cut diamonds in a variety of designs. A representative secondary reference is shown below, as provided by the Petitioner:<br />
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<tr><td style="text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh0rJ2fNN2E-kLuYLwhlCqy8OAgP6MOBwSJPYgbdMGN65qgAAtUaqchtzbWTQdQnaFSc-CQk7t2tttOB9e10efKuU125-0MQH5g0OjzIq9t77YqkKXG1O9bewiadYohIfP2ZcujQ92Dkhj1/s1600/Capture.png" imageanchor="1" style="margin-left: auto; margin-right: auto;"><img border="0" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh0rJ2fNN2E-kLuYLwhlCqy8OAgP6MOBwSJPYgbdMGN65qgAAtUaqchtzbWTQdQnaFSc-CQk7t2tttOB9e10efKuU125-0MQH5g0OjzIq9t77YqkKXG1O9bewiadYohIfP2ZcujQ92Dkhj1/s1600/Capture.png" /></a></td></tr>
<tr><td class="tr-caption" style="text-align: center;"><b><i>Christie's Diamond Cluster Ring (Prior Art)</i></b></td></tr>
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While the patent owner did not contest that the Lotus Carat qualified as a primary reference, the board disagrees with the Petitioner’s assertion that the “mixing of diamonds with different cuts” is the only relevant difference between the ‘132 patent and the Lotus Carat for purposes of obviousness. To the contrary, “[e]ven a cursory examination of the patented design” shows that other features (including the protrusions 112) contribute to each design’s overall visual appearance.<br />
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Nonetheless, the Board concludes that it need not decide whether the Lotus Carat qualifies as a primary reference—even if it did, the Board is unable to conclude, from the photographs presented, that the modifications made by the secondary references would properly “bridge the gap” to result in the same overall visual appearance as the patented design:<br />
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Here, the details of the secondary reference designs are not clearly discernable based on the evidence in the record. For example, it is not clear, just by viewing the proffered photos, how each stone in a particular secondary reference design is cut (i.e., single vs. full cut), what the shape of each stone is, how the stones are angled and set in relation to one another, and what height the stones are in relation to one another. All of these features, at least, contribute to the overall appearance of the patented design. Without supporting evidence, we are left to guess at what is shown in the photos of the secondary references. </blockquote>
The Board goes on to admonish Petitioner for improperly focusing on “design concepts” instead of overall visual appearance. For example, while Petitioner argues that the claimed design and the Lotus Carat both feature “a larger, round, central, full-cut . . . diamond surrounded by a plurality of smaller, canted or angled, round diamonds,” and that the secondary references disclose “mixing stones of different cuts,” the Board rejects such reasoning as “too high a level of abstraction to be useful in this obviousness analysis.” Petitioner also downplays a number of other differences between the references and the patented design, which the Board suggests is “driven by a hindsight reconstruction” rather than the teachings of the references.<br />
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For these reasons, the Board found that the Petitioner did not show a reasonable likelihood of prevailing, and so denied the petition.<br />
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Though Petitioner sought a rehearing, the Board was unswayed. For example, the Board notes that Petitioner fails to address the lack of detail in the secondary references, and continues to rely on “conclusory attorney argument” in favor of a hindsight-driven combination of design features. Thus, the Board denies Petitioner’s request for rehearing.<br />
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Those seeking <i>Inter Partes</i> Review of a design patent—or otherwise trying to invalidate one—should be sure to rely on clear, legible, sufficiently detailed copies of the references to be used. Arguments putting forth prior art references should always be directed to the overall visual appearance of the respective designs, rather than focusing on “design concepts” or other improperly abstract characterizations of the designs.Nathan T. Harrishttp://www.blogger.com/profile/16634609395961492280noreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-29861530905817676342016-10-04T13:44:00.000-04:002016-10-04T16:51:16.973-04:00Apple v. Samsung - Preview of Upcoming Oral Arguments before the Supreme Court of the United States<div class="separator" style="clear: both; text-align: center;">
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjKX9zNUZaTp0ydHiI_LZ74Bv2F8FVYT9fKnP4h0M6ZHQP7d_5swUu7UXIY2NPV4Y3suY2IdJoGmWzDIXP_UIFVbg4CA1vcgFDEevuSan2B1FCVDWEmJYo-iaVRyeaC5Y8Zazpk1jYx0pEQ/s1600/USSupremeCourtWestFacade.JPG" imageanchor="1" style="clear: left; float: left; margin-bottom: 1em; margin-right: 1em;"><img border="0" height="140" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjKX9zNUZaTp0ydHiI_LZ74Bv2F8FVYT9fKnP4h0M6ZHQP7d_5swUu7UXIY2NPV4Y3suY2IdJoGmWzDIXP_UIFVbg4CA1vcgFDEevuSan2B1FCVDWEmJYo-iaVRyeaC5Y8Zazpk1jYx0pEQ/s200/USSupremeCourtWestFacade.JPG" width="200" /></a>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 <i>amicus </i>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.</div>
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On October 11, the United States Supreme Court will hear oral arguments in the latest chapter of the ongoing Apple v. Samsung global smartphone patent wars. As many of you already know, the key issue on appeal is whether disgorged profits under 35 U.S.C. § 289 must be apportioned between profits attributable to the infringing design and profits attributable to other, functional aspects of the accused product. Under § 289, a design patent infringer is liable to a patent owner for the “total profits” earned from any “article of manufacture” bearing the patented design. Here, the article of manufacture is Apple’s iPhone, including a design directed to the outer shell, the graphical user interface, and the screen, as shown below: <br />
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At the Federal Circuit, the court found that Apple is entitled to disgorge and recover all of Samsung’s profits earned in connection with the infringing Galaxy smartphones, rejecting Samsung’s argument that Apple is only entitled to a certain percentage of profits based on the relative significance of the patented designs to the overall product. The Court easily dismissed Samsung’s arguments as being <a href="http://www.theordinaryobserver.com/2015/05/after-apple-v-samsung-what-is-left-of.html">clearly inconsistent with the legislative history</a>, which shows that § 289 was enacted specifically to stop apportionment in design patent cases. <br />
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At the Supreme Court, Samsung seems to be rehashing some of the same arguments from the Federal Circuit, with a little help from some like-minded <i>amici</i>. Here is a summary of the written arguments that have been presented by Apple, Samsung, and select groups of <i>amicus curiae </i>thus far: <br />
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<b>Brief of Petitioner Samsung. –</b> Samsung argues that Apple’s interpretation of the § 289 statute would create extreme results and threatens to undermine the “bedrock legal principles of causation and proportionality.” For example, Samsung contends that an infringing design on something as minor as a vehicle cup-holder could jeopardize the profits of an entire vehicle model. Samsung further asserts that the statutory language “<i><b>article </b></i>of manufacture to which such design or colorable imitation <i><b>has been applied</b></i>” is restrictive and qualifies the statute such that the relevant profits are those earned as a result of the infringement. Samsung points out that the term “article” can mean “one of several things forming a whole,” which could include one or more components of a larger product. However, Samsung never really grapples with the legislative history of § 289 and appears to be hoping he Supreme Court won’t delve into it. <br />
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<b>Brief of Respondent Apple. –</b> Apple, on the other hand, argues that the plain meaning of the § 289 statute supports a broad interpretation of the phrase “article of manufacture” extending to the entire product at issue. It alleges that Congress would not have used absolute language such as “total profit” if it did not intend to carve out an expansive damages rule for design patents. Further, Apple points to the fact that in 1946 Congress specifically amended the statute governing infringement damages for utility patents to exclude the term “profits” while specifically leaving that language in the § 289 statute. In the author’s opinion, the legislative history argument will be difficult for Samsung to overcome. <br />
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<b>Amicus Brief #1: The Internet Association, Dell, eBay, Facebook, Google, HP, et. al. –</b> A first group of <i>amici </i>comprised of a major consortium of high technology companies argue that the broad view of the § 289 statute advanced by Apple “is problematic because it ignores the reality of modern, multicomponent technological products” that are “not purchased primarily for the design of one or more isolated components.” They assert that Congress could not possibly have envisioned such complex technological products as smartphones in the nineteenth century thereby reducing the importance of legislative intent. The <i>amici </i>further distinguish previous case law cited by Apple as directed toward much simpler products that are not analogous to today’s sophisticated consumer devices. Lastly, the <i>amici </i>assert that Apple’s interpretation of the statute could lead to arbitrary results. For example, <i>amici </i>consider a design patent infringement case between a smartphone maker and one of their component suppliers. If the component supplier holds the patent they could sue the infringing smartphone maker for profits on the entire smartphone line whereas if the smartphone maker holds the same patent that can only sue the infringing component supplier for profits on that single component. <br />
<b><br />Amicus Brief #2: Select Group of 50 Intellectual Property Professors –</b> A second group of <i>amici </i>comprised of fifty intellectual property law professors further argue against Apple’s interpretation of § 289. The <i>amici </i>state that “by one estimate, there are over 250,000 patents that arguably cover various aspects of a smartphone” and “to conclude that one design patent drives the purchase of the product and that the defendant’s entire profit is attributable to infringing that patent, is to say that none of those functional features contribute anything to the value of the phone—a ludicrous proposition.” The <i>amici </i>also cite the absurdity of treating each design patent as the sole profit driver for an entire product, especially where multiple design patents cover the same product. However, this critique of § 289, again, appears to be based on notions of apportionment from damages law, and fails to address the fact that § 289 is an <b><i>equitable remedy </i></b>not based on damages or causation. <br />
<br />
<b>Amicus Brief #3: The Software Alliance, Microsoft, Adobe, IBM, Oracle, et. al. –</b> A third group of <i>amici </i>comprised of a consortium of software companies argues that design patents and the associated remedies should not be devalued because of their importance to the software industry. They contend that the way “software looks and feels to the consumer is a key driver in the marketplace.” As an example, the group points to the importance of features such as graphical user interfaces (GUIs) from the consumer perspective. Prior to the advent of modern GUIs, computer users typically had to enter arduous series of commands via an appropriate “string of letters and numbers.” In light of the important role design patents play in the software industry, <i>amici </i>urge the Court to adopt an interpretation of § 289 that is sufficient to provide “effective remedies” and “appropriate protection” for software developers. Thus, this group appears to be aligning themselves with Apple without issuing an explicit endorsement. <br />
<br />
<b>Amicus Brief #4: The United States of America</b> – The U.S. Department of Justice arguing as <i>amicus curiae </i>advances a position consistent with Samsung’s, however for slightly different reasons. The U.S. agrees with Apple that the § 289 statute requires disgorgement of “total profits,” but disagrees with Apple’s interpretation of what constitutes an “article of manufacture.” The U.S. argues that prior precedent has previously embraced an expansive definition of “article of manufacture” that includes singular components of a multi-component product. Under such an interpretation, the total profits authorized under § 289 would be the total profits derived from the infringing component(s) and not the product as a whole. The <i>amicus </i>acknowledges that calculating an extent of profits associated with particular components will undoubtedly be a fact-intensive inquiry. <br />
<br />
However, § 289 does <i><b>not</b></i> frame the disgorgement remedy in terms of profits <b><i>from</i></b> an article of manufacture. It defines infringement as “appl[ying] the patented design, or any colorable imitation thereof, <b><i>to any article of manufacture</i></b>” and then states that the remedy for such infringement is disgorgement of the infringer’s “total profit.” Again, any implication that total profits are somehow limited by the <b><i>extent </i></b>of infringement would be based on principles of damages and causation, not equity. And equitable principles should be the only relevant consideration with respect to § 289. It is therefore quite possible that even if the Supreme Court views Apple’s interpretation of § 289 to be unfair, sound jurisprudence may require the Court to uphold the plain statutory meaning and legislative intent of the stature as written. If so, Congress would have to amend § 289 to permit apportionment of profits in design patent cases. <br />
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We will let you know how the Court approaches this thorny issue next week as we post (nearly) live from the Supreme Court!Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-91120589640380702102016-07-21T14:23:00.000-04:002016-07-21T14:23:39.057-04:00Continuation-in-Part Design Patent Applications<div class="MsoNormal" style="margin-bottom: 0.0001pt;">
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<span style="font-family: inherit;">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.<o:p></o:p></span></div>
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<span style="font-family: inherit;">A CIP application is a patent application filed during the
lifetime of an earlier non-provisional patent application. A CIP repeats some,
a substantial portion, or all of the earlier non-provisional application, and
adds matter not explicitly disclosed in the earlier application. A CIP is
occasionally referred to as an “add-on” because of the additional subject
matter that may be grafted on to the earlier application. The U.S. Patent
Office reviews and examines CIPs in the same manner as all other non-provisional
patent applications.<o:p></o:p></span></div>
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<span style="font-family: inherit;">As you may suspect, a CIP application can be an attractive option
in certain circumstances. For instance, a CIP application offers the
opportunity to add subject matter, modify an existing disclosure, or expand on
previously described embodiments. Accordingly, a CIP application can provide an
effective tool for appending additional features to a pending application.
Further, a CIP can be used to reduce up-front expenses by combining new
features with an existing disclosure, potentially reducing preparation expenses
and attorney’s fees. For example, a CIP application may be used to incorporate
incremental improvements that would otherwise not justify a separate and
parallel design application. Lastly, claims within a CIP that are limited to
the subject matter of the earlier filed parent application may receive the
priority date of the parent application. However, claims that include subject
matter which is first disclosed in the CIP application do not inherit the
priority date of the parent application.<o:p></o:p></span></div>
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<span style="font-family: inherit;">Accordingly, CIP applications are not without their disadvantages.
Principle among the considerations to be balanced when making the decision to
file a CIP is the priority date that may be assigned. As mentioned, claims that
include subject matter which is not disclosed in the parent application are
limited to the priority date of the CIP application. Phrased another way, only
a claim that is fully supported (i.e., all of its limitations) by the
disclosure of the earlier filed application may inherit the earlier priority
date. While this can be impactful for many reasons, we will address only one
reason here for the sake of brevity – intervening prior art. In some instances,
Applicant’s own art, including the parent application itself, may be available
as prior art to render the later filed CIP claims obvious.<o:p></o:p></span></div>
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<div class="MsoNormal">
<span style="font-family: inherit;">As the drawings in most design patent applications are
incorporated into the claim language, walking the fine line between making
adjustments to the drawings without spoiling entitlement to an earlier priority
date can be a challenging task. Fortunately (or unfortunately), M.P.E.P. <span style="border: none windowtext 1.0pt; mso-border-alt: none windowtext 0in; padding: 0in;">§ 1504.04 does offer some limited guidance on the subject.
Notably, the M.P.E.P. provides that a later filed application that changes the
shape or configuration of a design disclosed in an earlier application is <i>not</i> entitled
to the benefit of the filing date of that earlier filed application. (<i>citing
In re Salmon</i>, 705 F.2d 1579 (Fed. Cir. 1983)). However, the M.P.E.P.
elaborates that a later filed application that reduces certain portions of a
drawing to broken lines, or converts broken line structure to solid lines, is
not considered a change in configuration as defined in <i>Salmon</i>. This
seems to suggest that reduction of solid lines to broken lines, or <i>vice
versa</i>, is not a departure that would introduce new matter.</span><o:p></o:p></span></div>
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<div class="MsoNormal">
<span style="font-family: inherit;"><span style="border: 1pt none windowtext; padding: 0in;">We also have some guidance from the Federal Circuit via <i>In
re Owens</i> regarding unclaimed boundary lines and entitlement to an
earlier priority date. </span>710 F.3d 1362 (Fed. Cir. 2013).<span style="border: none windowtext 1.0pt; mso-border-alt: none windowtext 0in; padding: 0in;"> In <i>In re Owens</i>, the Court offered that the best
advice for future applications regarding unclaimed boundary lines was presented
in the U.S.P.T.O.’s brief: “</span>unclaimed boundary lines typically should
satisfy the written description requirement only if they make explicit a
boundary that already exists, but was unclaimed, in the original
disclosure.” <i>Id. </i>at 1369<i>.</i> For a more detailed
analysis of <i>In re Owens</i> check out our post <a href="http://www.theordinaryobserver.com/2013/03/federal-circuit-alert-in-re-owens.html" target="_blank">here</a>.</span></div>
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<span style="font-family: inherit;"><br /></span></div>
<div class="MsoNormal">
<span style="font-family: inherit;">Accordingly, a properly timed and filed CIP application can be a
strategic business decision to decrease short-term costs and ensure the
flexibility to claim the subject matter of a prior application. However, a CIP
application is not appropriate in all situations, and in many cases the
additions made to the disclosure of a parent application may destroy any of the
benefits provided by the CIP application. To minimize risk, an Applicant
considering a CIP would be best warned to file before the publication of the
parent application to avoid a situation where the parent could be available as
prior art.</span></div>
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Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-1412063043937607672016-05-03T21:58:00.000-04:002016-05-03T21:58:27.939-04:00Design Patent Destinations - Hague Seminar to be Presented by WIPO in Geneva<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgQgniqH5ZQ10oO7h1yNl9ps1ksSzO0iZbTlZAdzFu_obG8oHl4DC-MByRACol69UeifKoYVSjiWY78e55BGnCijSj5BAVuj7s3luXR7mmA9m6H4w-ugJC_L1QQhQKpdTwSmufEpUWkBV5D/s1600/WIPO.png" imageanchor="1" style="clear: left; float: left; margin-bottom: 1em; margin-right: 1em;"><img border="0" height="140" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgQgniqH5ZQ10oO7h1yNl9ps1ksSzO0iZbTlZAdzFu_obG8oHl4DC-MByRACol69UeifKoYVSjiWY78e55BGnCijSj5BAVuj7s3luXR7mmA9m6H4w-ugJC_L1QQhQKpdTwSmufEpUWkBV5D/s200/WIPO.png" width="200" /></a>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 <a href="http://www.wipo.int/edocs/mdocs/govbody/en/wipo_hs1_16/wipo_hs1_16_inf_1.pdf" target="_blank">here</a>. <br />
<br />
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.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-4843770333051169792016-04-25T09:00:00.000-04:002016-04-25T09:00:00.154-04:00Sport Dimension v. Coleman Company - Federal Circuit Seeks to Clarify Functionality<div dir="ltr" style="text-align: left;" trbidi="on">
Last week, the Federal Circuit issued an opinion in <i>Sport Dimension, Inc. v. The Coleman Company, Inc.</i>, 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 <i><a href="https://scholar.google.com/scholar_case?case=4297665106804245686">Ethicon Endo-Surgery, Inc. v. Covidien, Inc.</a></i>, and answers a few additional questions related to design patent functionality.<br />
<br />
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, <a href="https://scholar.google.com/scholar_case?case=4065677538492368378" style="font-style: italic;">Richardson v. Stanley Works, Inc</a>. That case concerned design patent D507,167 for a multi-function tool, and an alleged infringing tool designed by Stanley, as shown below:<br />
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<br /><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEg77Y8oLtBrhU81pAH9aRYFJQ6P-Lo9QJ5EGt2d_VNIkjT2GwpmaRp8NVuBu1XX4O_M45cV1mWyE5I4GU8koAxpXRnc9nNa-wi-seUrRcyRoKuS9LfrsecFojO3BdxK9B8fMsrF4AfYOAg9/s1600/Richardson.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="85" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEg77Y8oLtBrhU81pAH9aRYFJQ6P-Lo9QJ5EGt2d_VNIkjT2GwpmaRp8NVuBu1XX4O_M45cV1mWyE5I4GU8koAxpXRnc9nNa-wi-seUrRcyRoKuS9LfrsecFojO3BdxK9B8fMsrF4AfYOAg9/s400/Richardson.png" width="400" /></a></div>
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The Federal Circuit affirmed the district court's finding of no infringement. In doing so, it endorsed the district court's claim construction, which "factored out" the functional aspects of the patented design:<br />
<blockquote class="tr_bq">
[E]lements such as the handle, the hammerhead, the jaw, and the crowbar are dictated by their functional purpose. The jaw, for example, has to be located on the opposite end of the hammer head such that the tool can be used as a step. The crowbar, by definition, needs to be on the end of the longer handle such that it can reach into narrow spaces. The handle has to be the longest arm of the tool to allow for maximum leverage. The hammer-head has to be flat on its end to effectively deliver force to the object being struck. As demonstrated by the prior art, those are purely functional elements whose utility has been known and used in the art for well over a century.</blockquote>
The Federal Circuit's approach effectively construed the design to claim this:<br />
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh_w1AJiMwDmONSoAtOr7zr3Gspp_8W0Jmh8vY0lP_aZTv5SKD-EQOKK75NIT-rfNhXNejosRmKo6x5wnZ2GlmQG_1n7KtMq-cYxe2_8Uxh3YST9V4KHfFwGCkeuMrHAisQpkIwc3sqntn-/s1600/Richardson+Construed.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="197" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh_w1AJiMwDmONSoAtOr7zr3Gspp_8W0Jmh8vY0lP_aZTv5SKD-EQOKK75NIT-rfNhXNejosRmKo6x5wnZ2GlmQG_1n7KtMq-cYxe2_8Uxh3YST9V4KHfFwGCkeuMrHAisQpkIwc3sqntn-/s400/Richardson+Construed.png" width="400" /></a></div>
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When the functional elements of the claim were ignored, the court found significant differences between the claimed and accused designs.</div>
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The <i>Richardson</i> "factoring out" approach remained the prevailing method for construing claims containing functional elements until 2015, when the Federal Circuit revisited the issue in <i>Ethicon. </i>There, Ethicon appealed a finding of no infringement of four design patents directed to ultrasonic surgical devices. A comparison of a claimed device and Ethicon's accused surgical device is shown below:<br />
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgNzC0pmQxSHUwuOUpK9y9cdAifeDVDVpYHnvlD0tkMLZ_TXPbscx3L2IAugAad2eQFOkYNCVBJtL0B5-SU3fbJ2TtvTYWT5QplN-SPkf1atK3KOi5TyJ93IEM_4HY_JyUvT87O1f2IihP9/s1600/Ethicon.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="211" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgNzC0pmQxSHUwuOUpK9y9cdAifeDVDVpYHnvlD0tkMLZ_TXPbscx3L2IAugAad2eQFOkYNCVBJtL0B5-SU3fbJ2TtvTYWT5QplN-SPkf1atK3KOi5TyJ93IEM_4HY_JyUvT87O1f2IihP9/s400/Ethicon.png" width="400" /></a></div>
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The district court relied on <i>Richardson</i> to "factor out" the functional aspects of the claimed design, which in the figure above include both the trigger and the torsion knob, the only features of the design that had been claimed. Because this factored out all of the claim, the district court found the asserted design patents had "no scope" and could not be infringed. </div>
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The Federal Circuit found the district court erred in its construction. "Factoring out" the functional elements did not entail eliminating them from the design completely. Recalling <i>Richardson</i>, the court explained:</div>
<blockquote class="tr_bq">
the design claim did not broadly protect a multi-function tool with a hammer, crowbar, handle, and claw, but only the specific ornamental aspects of that tool in the depicted configuration.</blockquote>
Ethicon was precluded from claiming the overall concept of an open-style trigger handle and a torque knob on its ultrasound devices. It was still entitled to claim the ornamental designs adorning those elements. However, the court agreed that once one looked past the general design concepts of an open trigger handle, the toque knob and the functional aspects claimed in the other design patents at issue, the accused product was plainly dissimilar. The court therefore affirmed a finding of no infringement.<br />
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<i>Ethicon </i>appeared to recast <i>Richardson</i> in order to provide some clarity to what had become a very muddy method for construing the functional aspects of design patent claims. This week's <i>Sport Dimension</i> opinion suggests the court believed some additional clarity was still required.<br />
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<i>Sport Dimension</i> concerns a design patent owned by the Coleman Company directed to the ornamental design for a flotation device, shown below along side the accused device. <br />
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjEnwjU1tKVpoosiyGWK235rYRSgw1nvLtyUEdD4TLQ3BoyyAEQXVNiZCllhINTPS_5lTPcK4GFaue787R5IPGCvPh5xKCPMuwYMrRJPHSluXOr0-1ZTomIGk5UiU35MaWcqZ8148QZHuqe/s1600/Sport.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="122" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjEnwjU1tKVpoosiyGWK235rYRSgw1nvLtyUEdD4TLQ3BoyyAEQXVNiZCllhINTPS_5lTPcK4GFaue787R5IPGCvPh5xKCPMuwYMrRJPHSluXOr0-1ZTomIGk5UiU35MaWcqZ8148QZHuqe/s400/Sport.png" width="400" /></a></div>
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In the district court, Sport Dimension sought, and received, a construction of the asserted claim as follows:<br />
<blockquote class="tr_bq">
The ornamental design for a personal flotation device, as shown and described in Figures 1–8, except the left and right armband, and the side torso tapering, which are functional and not ornamental.</blockquote>
The Federal Circuit objected to this construction as impermissibly factoring out elements of the claimed design under <i>Ethicon</i>. The court agreed that a claim construction should issue, and that the armbands and tapered sides served a functional, and not ornamental purpose, but found fault with the district court removing these elements completely from the construction.<br />
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From there, <i>Sport Dimension</i> takes <i>Ethicon</i> a step further, endorsing a framework for determining which elements of a patented design are functional. For that, the court borrowed a test from the patent invalidity side of functionality, the <i>Berry Sterling</i> factors:<br />
<blockquote class="tr_bq">
whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.</blockquote>
The <i>Berry Sterling</i> factors were created to aid courts in determining whether a design was not patent eligible because it was dictated by utilitarian function. <i>Ethicon </i>appeared to kill functionality as a basis for invalidity, except in the exceedingly rare situation where the claimed design is effectively the only design capable of performing its intended function. From now on, these questions will almost always be answered through claim construction. However, <i>Sport Dimension</i> ensures that <i>Berry Sterling</i> will survive the death of the doctrine that spawned it.<br />
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The court found several of the <i>Berry Sterling </i>factors indicated that the design of the patent's armbands and side torso tapering served a functional purpose. Looking at other, similar designs, the patented armbands and torso appeared to be the best available design for a personal flotation device. Coleman had also filed a utility application covering the functional aspects of those features. Coleman was also found to have promoted the particular utility of the armbands and torso in its advertisements.<br />
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The Federal Circuit then provided some clarity regarding the consequences of finding particular design elements to be functional. While the court was precluded from excluding these elements from the claim, the multitude of functional elements combined with a comparatively minimal amount of surface ornamentation resulted in a claim with a decidedly narrow scope. After explaining at length the "limited" scope of the claimed design, the Federal Circuit noted that "nothing in this opinion should foreclose any pre-trial resolution of the infringement issue that is otherwise substantively and procedural appropriate" - placing a very heavy thumb on the scale in favor of Sport Dimension when the case returns to the district court.<br />
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This is where design patent functionality stands, as of 2016. Functionality is no longer an invalidity question, unless there is no other way to perform the same function other than the claimed design. All other questions of functionality are addressed through claim construction, and courts are encouraged to use the <i>Berry Sterling </i>factors when deciding those issues. A design incorporating functional elements has some scope, but a court is not precluded from interpreting the claim very narrowly in view of the functional aspects, such that even minor differences between the claimed and accused designs will be significant. </div>Eric Carnevalehttp://www.blogger.com/profile/02268102785853628646noreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-65302789041515561082016-04-20T10:25:00.000-04:002016-04-20T10:36:28.768-04:00Design Day Report from the Front Lines Slides<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjsylR29XQsApw-vlAarS6hceEwr0GGVwObCfxtKvEXRxdtN0MoNA4CDSEb5hfHq_6hmMr0pxT4ziMlx4MnjUC5-uG8FezAalig68k_4LTR5FqeLTEQqyxsLL7hlaICfyzgoGyGpHxbb-Lr/s1600/Report+from+the+Front+Lines.png" imageanchor="1" style="clear: left; float: left; margin-bottom: 1em; margin-right: 1em;"><img border="0" height="150" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjsylR29XQsApw-vlAarS6hceEwr0GGVwObCfxtKvEXRxdtN0MoNA4CDSEb5hfHq_6hmMr0pxT4ziMlx4MnjUC5-uG8FezAalig68k_4LTR5FqeLTEQqyxsLL7hlaICfyzgoGyGpHxbb-Lr/s200/Report+from+the+Front+Lines.png" width="200" /></a></div>
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. <br />
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<a href="https://drive.google.com/file/d/0B0V5Kq8qLmvaMWdPOGw3cW1LYUE/view?usp=sharing" target="_blank">Here is a link to view and download the slides</a>.<br />
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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.<br />
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Enjoy!Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-24406930939300691422016-04-18T17:18:00.001-04:002016-04-18T17:18:54.952-04:00USPTO Requests Comments on Proposed Written Description Guidance for Design Patents<div dir="ltr" style="text-align: left;" trbidi="on">
The United States Patent and Trademark Office has issued a <a href="https://www.gpo.gov/fdsys/pkg/FR-2016-04-15/pdf/2016-08760.pdf">Request for Comments</a> 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?<br />
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEi2rH4VAyw8nhizEPtV94e1SVdX2FESlXzeQ2wp-wGSc_W76kpMFbCteq_EAxot9Mtu0TCvGipM5D5enz-9ZoBQ2sZA1z1IVBiv0tZbyLZ2SMzZkRzrmua8cXYfgVe97x2c0L2pHStrAf-2/s1600/Original+Amended.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="187" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEi2rH4VAyw8nhizEPtV94e1SVdX2FESlXzeQ2wp-wGSc_W76kpMFbCteq_EAxot9Mtu0TCvGipM5D5enz-9ZoBQ2sZA1z1IVBiv0tZbyLZ2SMzZkRzrmua8cXYfgVe97x2c0L2pHStrAf-2/s320/Original+Amended.png" width="320" /></a></div>
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<a name='more'></a>Most practitioners when seeing the case above, would say the amended claim clearly meets the written description requirement (or that it is entitled to claim priority to the earlier-filed claim, in the case of a continuing application). A reasonable person would likely understand that the inventor had "possession" of the design in the amended claim at the time the original claim was filed. </div>
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The Patent Office agrees that in most cases the answer would be clear. However, it recognizes that in some situations, the original claim may not be enough to disclose and describe the amended claim. Take one example provided by the <a href="http://www.uspto.gov/patents/law/%20comments/dr_a-aipla_20140314.pdf">American Intellectual Property Law Association in response to a previous request for comments in 2014</a>:</div>
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgYlzOuom1o0XxSKBy6la6hcdNbKl1UbzPF9qQ3WRzt4CrBMapSrDIp2I0Y7ikRoefa6pwNGegpHgt3dbsDDlEbowFavI9Vj7Updk_kPzAboRWca4i0WKnBAMOmqUvMl6LczJ235OnQSVWy/s1600/Original+Amended+AIPLA.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="174" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgYlzOuom1o0XxSKBy6la6hcdNbKl1UbzPF9qQ3WRzt4CrBMapSrDIp2I0Y7ikRoefa6pwNGegpHgt3dbsDDlEbowFavI9Vj7Updk_kPzAboRWca4i0WKnBAMOmqUvMl6LczJ235OnQSVWy/s320/Original+Amended+AIPLA.png" width="320" /></a></div>
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Here, though the original hypothetical claim discloses a 10 x 10 grid comprised of broken lines, it is difficult to imagine that the inventor has possession of any or every design utilizing some or all of those lines, such as the amended drawing to the right. </div>
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The question from the Patent Office is, where do you draw the line, so to speak, between those examples?</div>
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<a href="https://www.gpo.gov/fdsys/pkg/FR-2014-02-06/pdf/2014-02578.pdf">In 2014, when the Patent Office first sought comments on this issue</a>, they proposed a multi-factor test that examiners could apply to determine if a new claim met the written description requirement based on an earlier disclosure, including:</div>
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<ol style="text-align: left;">
<li>The presence of a common theme among the subset of elements
forming the newly identified design claim, such as a common appearance; </li>
<li>the subset of elements forming the newly identified design
claim share an operational and/or visual connection due to the nature
of the particular article of manufacture (e.g., set of tail lights of
an automobile); </li>
<li>the subset of elements forming the newly identified design
claim is a self-contained design within the original design; </li>
<li>a fundamental relationship among the subset of elements forming
the newly identified design claim is established by the context in
which the elements appear; and/or </li>
<li>the subset of elements forming the newly identified design
claim gives the same overall impression as the original design claim.</li>
</ol>
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The Patent Office abandoned this approach after reviewing the public comments. In its place, the current proposal attempts to focus on the language and intent behind recent Federal Circuit opinions regarding the written description requirement, including <i>In re Owens</i>, 710 F.3d 1362 (Fed. Cir. 2013), and <i>In re Daniels</i>, 144 F.3d 1452 (Fed. Cir. 1998). <a href="http://www.theordinaryobserver.com/2013/03/federal-circuit-alert-in-re-owens.html">We previously covered Owens and its interpretation of Daniels when we reported on that case in 2013</a>. In short, examiners would be instructed to:</div>
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determine whether an ordinary designer would recognize upon reviewing the complete original/earlier application that the inventor had possession of the later-claimed design in the original/earlier disclosure. . . . When making this determination,<b> the examiner would consider what the original/earlier application, in its totality</b> (e.g., including the title, any descriptive statements, and the drawings), <b>would have reasonably conveyed to an ordinary designer at the time of the invention</b>, and how an ordinary designer in the art would have designed the article that is the subject of the design claim.</blockquote>
This more holistic approach to the written description question may avoid the pitfalls and unintended consequences of a more formalistic, factor-based approach. But it remains to be seen whether these instruction would provide examiners with meaningful guidance when interpreting amended or continuing design patent claims.<br />
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This is where our readership can help. The Patent Office is seeking public comments on its proposed approach. Perhaps more importantly, it is seeking<b> specific examples</b> that the public believes would be helpful to illustrate the proposed approach or any suggested approach for applying the written description requirement in design applications. They would like to see:<br />
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examples from the public that demonstrate adequate written description as well as examples that demonstrate a lack of written description. Additionally, examples of situations in which the presence or lack of written description is not readily apparent, <i>i.e.</i>, examples that are close to the line between adequate written description and insufficient written description, would be most helpful.</blockquote>
It is hard to overstate how important these examples could be in shaping the future examination of design patent applications. In 2014, after the Supreme Court's opinion in <i>Alice Corp. </i><i>v. CLS Bank</i>, 135 S.Ct. 2347 (2014), the Patent Office issued similar guidance and examples for determining whether claims were patent-ineligible because they were directed to an abstract idea. Patent prosecutors reported that examiners tended to rely heavily on these examples in support of rejections of patent applications under Section 101.<br />
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Better examples make for better examinations. To that end, if you have any experience you would like to share with the Patent Office on this matter, feel free to direct your comments to <a href="mailto:DesignWrittenDescription2016@uspto.gov">DesignWrittenDescription2016@uspto.gov</a>. And if you care to, share them with us as well in the comments below.</div>
Eric Carnevalehttp://www.blogger.com/profile/02268102785853628646noreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-34116577548904810342016-01-27T10:03:00.000-05:002016-01-27T10:03:23.925-05:00(Future) Motion for Temporary Restraining Order Granted<div dir="ltr" style="text-align: left;" trbidi="on">
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjoI-rDywRT5vGl8D7q0A7yLyxulBd-V9XAwDM1n-04DQECLyiIGIZ5IySKPYW9b_ELzkeVcOkwmSuSadgoAWh82alyYMWoLmQIxfdhhB7wvusV1gtPNJ6svK9FX7SuNxlTSbzozhGkcNHt/s1600/Future+Motion.png" imageanchor="1" style="clear: left; float: left; margin-bottom: 1em; margin-right: 1em;"><img border="0" height="131" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjoI-rDywRT5vGl8D7q0A7yLyxulBd-V9XAwDM1n-04DQECLyiIGIZ5IySKPYW9b_ELzkeVcOkwmSuSadgoAWh82alyYMWoLmQIxfdhhB7wvusV1gtPNJ6svK9FX7SuNxlTSbzozhGkcNHt/s200/Future+Motion.png" width="200" /></a></div>
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<span style="font-family: "times new roman" , "serif"; font-size: 12.0pt;">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.</span></div>
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<span style="font-family: "times new roman" , "serif"; font-size: 12.0pt;">Plaintiff
Future Motion, Inc. moved <i>ex
parte</i> for a Temporary Restraining Order, Seizure Order and a Preliminary
Injunction against Changzhou First International Trade Co., Ltd. Future Motion, which holds U.S. Patent No.
D746,928, alleged
that Changzhou was distributing, promoting, and offering to sell infringing
products branded as “Surfing Electric Scooter” at CES. Changzhou failed to respond to Future Motion's
reasonable efforts to notify it of its infringement, and as such, Future Motion
moved for immediate injunctive relief to stop Changzhou's infringing
activities. <o:p></o:p></span></div>
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<span style="font-family: "times new roman" , "serif"; font-size: 12.0pt;">The
Court considered the motion for a temporary restraining order on an emergency basis. In doing so, it found that Future Motion was likely to succeed in showing that Defendant infringed the D'928 patent, given the visible similarities, as shown below. The court also found that the Defendant was likely to offer the
infringing products at CES later that week. Further, because
Defendant is a China-based manufacturer with no regular place of business or
assets in the US, the Court determined that Defendant was likely to leave the
US after the show, making it difficult or impossible for Future Motion to
recover a monetary judgement.<o:p></o:p></span></div>
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhuw9FVF6GGo8mUB-vIJM9ZoTEoXQNF9Ixj0HhDWIMbIiWcZt-6TI5e5rB0IFaCvdPUvN5nKvzTRCAdtHg9r92VSVx1hmAq5oAuGj-s3Jip5pBYKCAej2BuvLBgcZzWIxYv5oyI-gFjxxuI/s1600/SKATEBOARDS.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="105" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhuw9FVF6GGo8mUB-vIJM9ZoTEoXQNF9Ixj0HhDWIMbIiWcZt-6TI5e5rB0IFaCvdPUvN5nKvzTRCAdtHg9r92VSVx1hmAq5oAuGj-s3Jip5pBYKCAej2BuvLBgcZzWIxYv5oyI-gFjxxuI/s320/SKATEBOARDS.png" width="320" /></a></div>
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<span style="font-family: "times new roman" , serif; font-size: 12pt; line-height: 115%;">Absent an </span><i style="font-family: 'times new roman', serif; font-size: 12pt; line-height: 115%;">ex parte</i><span style="font-family: "times new roman" , serif; font-size: 12pt; line-height: 115%;"> restraining order, the Court
determined, Defendant’s promotion and offers for sale of the accused products
would result in immediate and irreparable injury to Future Motion in the form
of lost market share, loss of control over its valuable intellectual property
rights, loss of consumer goodwill, and interference with its ability to exploit
the D'928 patent. Accordingly, the Court
found it appropriate to prevent Defendant from exhibiting and offering for sale
its allegedly infringing products at CES.
Because the show was the same week as the motion was filed, the temporary
restraining order was granted immediately and on an emergency basis. Future Motion’s design patent rights afforded
it the opportunity to immediately prevent an alleged infringer from displaying and offering to
sell potentially infringing products at a major trade show.</span></div>
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Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-13413165317289942302016-01-19T17:41:00.000-05:002016-01-19T17:41:17.842-05:00Design Patent Figures with 3D CAD Software<div class="MsoNormal" style="text-align: justify;">
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.<o:p></o:p></div>
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In contrast to formal line drawings, 3D
CAD images often lack broken lines, bold lines, and other artistic
stylings that characterize the shape and contour of the depicted design. For
purposes of illustration, FIG. 1 shows an example 3D CAD image, and FIG. 2 shows an example formal line drawing prepared by a draftsman. FIG. 1 and FIG. 2 are not images of the same headlight, and are merely provided for illustrative purposes.<br />
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<table align="center" cellpadding="0" cellspacing="0" class="tr-caption-container" style="margin-left: auto; margin-right: auto; text-align: center;"><tbody>
<tr><td style="text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEheM33IbLUCHd9iQE3tWl_Xn8BUuHwsEgz6i-ZchpcD-It3H8VTKnWjC6MPwM5Vbc1s2NcKps0ayQgrm-MoR1EVUqqnNg2ELq3rNi1sFAV2d3IuYdGn2GGjCr24jkDAWwXI2r9KXhHUMqFo/s1600/headlight+3.png" imageanchor="1" style="margin-left: auto; margin-right: auto;"><img border="0" height="203" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEheM33IbLUCHd9iQE3tWl_Xn8BUuHwsEgz6i-ZchpcD-It3H8VTKnWjC6MPwM5Vbc1s2NcKps0ayQgrm-MoR1EVUqqnNg2ELq3rNi1sFAV2d3IuYdGn2GGjCr24jkDAWwXI2r9KXhHUMqFo/s320/headlight+3.png" width="320" /></a></td></tr>
<tr><td class="tr-caption" style="text-align: center;">FIG. 1 - 3D CAD IMAGE</td></tr>
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<table align="center" cellpadding="0" cellspacing="0" class="tr-caption-container" style="margin-left: auto; margin-right: auto; text-align: center;"><tbody>
<tr><td style="text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgXVE_1EUe5f1pyLiJjT9WonheUTq5S12V44GXwfAufixvySze4_mQ2X7sGfF2EY8D6MZg6gElGvwR_2hW_l1cq8JyDx8x78BtOnoRuoexVzhupoHFkuqfw9DS9gblEOOOncWZSf5bFQdgQ/s1600/headlight+2.jpg" imageanchor="1" style="margin-left: auto; margin-right: auto;"><img border="0" height="176" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgXVE_1EUe5f1pyLiJjT9WonheUTq5S12V44GXwfAufixvySze4_mQ2X7sGfF2EY8D6MZg6gElGvwR_2hW_l1cq8JyDx8x78BtOnoRuoexVzhupoHFkuqfw9DS9gblEOOOncWZSf5bFQdgQ/s320/headlight+2.jpg" width="320" /></a></td></tr>
<tr><td class="tr-caption" style="text-align: center;">FIG. 2 - FORMAL LINE DRAWING</td></tr>
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As a further example, FIG. 3 shows another 3D CAD image, and FIG. 4 shows a second formal line drawing. FIG. 3 and FIG. 4 are not images of the same automobile, and are merely provided for illustrative purposes.<br />
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<tr><td style="text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiLaSOZ-UsNFRPOAU3xPxrQbCNzG9iWhva0DPKpZexuSnn3ffEeSp0NWH3YaxS9gPRucwRm_KHSGS7zXSca57qYicsEH0kPr3pMiLVekna1hsF8pMHE6HKMLonXF0oxdyQpbVtJ-uBSdZNl/s1600/car+1.jpg" imageanchor="1" style="margin-left: auto; margin-right: auto;"><img border="0" height="189" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiLaSOZ-UsNFRPOAU3xPxrQbCNzG9iWhva0DPKpZexuSnn3ffEeSp0NWH3YaxS9gPRucwRm_KHSGS7zXSca57qYicsEH0kPr3pMiLVekna1hsF8pMHE6HKMLonXF0oxdyQpbVtJ-uBSdZNl/s320/car+1.jpg" width="320" /></a></td></tr>
<tr><td class="tr-caption" style="text-align: center;">FIGURE 3 - 3D CAD IMAGE</td></tr>
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<tr><td style="text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhfs7qV6THe0po8N9-hbeGJg1Bnhw6iZrKdbt3zZ_qLA0yFlJxZXhyphenhyphenagIcHQyWc5QO-NKI5xIk0qU2RP2h_4BXxbtcbG2a6UZUAf3xa0vgPuVEMvjZxlzTdZznRV_STo6BjhaLthyphenhyphenaOVlxy/s1600/car+2.jpg" imageanchor="1" style="margin-left: auto; margin-right: auto;"><img border="0" height="146" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhfs7qV6THe0po8N9-hbeGJg1Bnhw6iZrKdbt3zZ_qLA0yFlJxZXhyphenhyphenagIcHQyWc5QO-NKI5xIk0qU2RP2h_4BXxbtcbG2a6UZUAf3xa0vgPuVEMvjZxlzTdZznRV_STo6BjhaLthyphenhyphenaOVlxy/s320/car+2.jpg" width="320" /></a></td></tr>
<tr><td class="tr-caption" style="text-align: center;">FIGURE 4 - FORMAL LINE DRAWING</td></tr>
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The short and simple answer is
that 3D CAD images are not explicitly prohibited by the U.S.P.T.O., or the
applicable rules. The M.P.E.P. does not appear to forbid 3D CAD images, and the
C.F.R. vaguely requires black and white reproducible drawings or photographs.
However, those planning to file a design patent application with 3D CAD images should proceed at their own
risk.<br />
<br />
A 3D CAD image, such as a SolidWorks (or similar) image, will likely unnecessarily
limit your disclosure, and may make prosecution of your patent application more
difficult. For instance, formal line drawings would be advisable if portions of
the drawings need to be disclaimed. Also, failure to include bold or
broken lines may omit indentations, openings, raised areas, lowered
areas, or other important surface details of your design. Lastly, while saving
costs up front, 3D CAD images may invite clarity rejections from the patent
office, which can result in delays in obtaining protection for your design and
increases in prosecution costs.<o:p></o:p></div>
Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-31115837173784219532015-12-23T17:00:00.000-05:002015-12-23T21:00:38.570-05:00Federal Circuit Ruling Opens the Door to "Offensive" Design Patents<div dir="ltr" style="text-align: left;" trbidi="on">
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This week, the <i>en banc </i>Federal Circuit issued an opinion in <i>In re Tam</i>, 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. <i>Pro-Football, Inc. v. Blackhorse</i>, 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. </div>
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Simon Shiao Tam is the front man for a band calling themselves "The Slants." It is effectively undisputed that Mr. Tam adopted that name for his band in a deliberate attempt to "reclaim" an expression understood to be a derogatory term for persons of Asian decent. While the PTO does not appear to have doubted Mr. Tam's intentions, it refused registration of the band's name as a trademark on the basis that "a substantial composite of persons of Asian descent would find the term offensive." Tam appealed, arguing that the portion of the statute banning the registration of derogatory marks violated the First Amendment.</div>
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The relevant portion of Section 2 provides: </div>
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No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it [] Consists of or comprises <b><i>immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute</i></b>. </div>
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Long standing precedent has held that this prohibition does not run afoul of the First Amendment. Rather, the refusal to register any particular trademark was not believed to invoke the First Amendment at all. As the Federal Circuit's predecessor court explained:</div>
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With respect to appellant’s First Amendment rights, it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.</div>
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<i>In re McGinley</i>, 660 F.2d 481, 484 (C.C.P.A. 1981). In other words, a person is still permitted to use a trademark without obtaining a federal registration, and is therefor not prevented from speaking. Courts have also long held that the government is not required to subsidize an expression that it disapproves of. This is a major reason the government is allowed to refuse to issue offensive personalized license plates, or deny funding to organizations that promote abortion.</div>
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The government's position has attracted many critics over the years. The belief that the refusal to register a mark does not prevent a person from speaking may be naively formalistic. A federal trademark registration can be incredibly valuable, and it is often considered untenable for a company to maintain any significant branding that is incapable of being registered. Indeed, the Washington Redskins case is closely watched in large part because it is understood the team will likely have no choice but to rebrand if their trademark registration is permanently canceled. In addition, many have questioned the value and effectiveness of allowing low level government employees to make individualized calls on what is and is not offensive. The <i>Tam </i>court notes that the Copyright Office has no such content-based restriction on registration, and no apparent ill effects have resulted from the presumed government endorsement of offensive copyrighted works. The <i>Tam</i> opinion is also an entertaining read for the multitude of string citations intended to highlight the inconsistent application of this statute with respect to individual registration. The court notes for example that the mark HAVE YOU HEARD SATAN IS A REPUBLICAN was rejected as disparaging the Republican Party, while THE DEVIL IS A DEMOCRAT was accepted for registration. </div>
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A majority of the Federal Circuit found the critics' position persuasive. The court first held that the disparagement clause targets a trademark's expressive content, and is therefore not entitled to review under the lower degree of scrutiny reserved for restrictions of commercial speech. The court next held that the restrictions deny legal rights to individuals based on the content of the speaker's message, and the government's justifications are not sufficient to overcome strict scrutiny. The registration of a trademark is not fairly understood to be a government endorsement of that mark. And furthermore, trademarks do not fall within the exceptions of the government subsidies doctrine because the government is not permitted to leverage funding or government benefits to regulate speech outside of relatively narrow contours. </div>
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On this basis, the Federal Circuit found Section 2(a) of the Trademark Act to be unconstitutional.</div>
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From this extended discussion of federal trademark law, we come back to the focus of this blog: design patents. </div>
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The U.S. Patent and Trademark Office guidelines for the prosecution of design patents contains the following provision, reflecting the section of the Trademark Act discussed at length above:</div>
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Design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected as nonstatutory subject matter under 35 U.S.C. 171. </div>
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M.P.E.P. § 1504.01(e). It should be noted that the Patent Office's statutory basis for this ban is less than compelling. 35 U.S.C. § 171 broadly describes the scope of patentable subject matter for designs, and contains no specific prohibition for offensive designs. The Patent Office also relies on non-statutory federal regulations, namely 37 C.F.R. § 1.3, to support its rejections. Section 1.3 states, in its entirety:</div>
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1.3 BUSINESS TO BE CONDUCTED WITH DECORUM AND COURTESY.</div>
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Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers.</div>
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This regulation also applies to applications for utility patents. However, the Patent Office does not contain a similar guideline banning offensive utility applications.</div>
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Considering the lack of any firm basis in the law, the Patent Office's guidelines are hard to defend in the face of the Federal Circuit's decision in <i>Tam</i>. The restriction is clearly targeting the expressive aspect of a challenged design, and whatever justification the government may have for rejecting designs it deems to be offensive is belied by the fact that an individual may seek a utility patent covering the functional aspects of the same subject matter without the equivalent restriction for content.</div>
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A case challenging the constitutionality of a rejection under Section 1504.01(e) of the MPEP may not come before a court any time soon. Rejections based on offensiveness of a design appear to be rare, and there does not appear to be case law on point in either direction. Regardless, it may behoove the Patent Office to consider whether content-based restrictions on the patentability of designs are now a dead letter. Additionally, considering the majority of appellate courts have not spoken on the trademark issue decided in <i>Tam</i>, individuals seeking protection for designs that stretch the bounds of decorum may want to weigh the viability of a design patent, as patent law is the exclusive jurisdiction of the Federal Circuit.</div>
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As a final note, one should bear in mind that the constitutionality of Section 2(a) (and possibly Section 1504.01(e) by extension) is not finally determined. The Fourth Circuit has yet to rule on this issue in <i>Pro-Football</i>. Regardless of how that case comes out, this issue is almost certain to be appealed to the Supreme Court. It's very likely we will see another opinion on this matter in the next year.</div>
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In the spirit of the holidays, we leave you with a figure from an U.S. Design Patent No. 372,207, which, while not offensive in the eyes of the Patent Office, may still leave you with a Christmas Smile, or at least a Christmas Cringe. We give you, "<span class="patent-text-highlight">Santa</span> Claus Figure in a <span class="patent-text-highlight">Tub" by Seymour Cohen:</span></div>
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEigMrQ1w1RRAWINwr89OIjgrVCFgLuCXPQbj9jkmep0z87b-BLruFaa1yjys_BIP-BpMAHwAHMrfXNNePhlMcxRUfZZn1Q5KLS7xDFzuZIUVB7jKJ1C3wFQFu7nrhdrWQPk5M5QBbHINRjY/s1600/Santa+Claus+Figure+in+a+Tub.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="315" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEigMrQ1w1RRAWINwr89OIjgrVCFgLuCXPQbj9jkmep0z87b-BLruFaa1yjys_BIP-BpMAHwAHMrfXNNePhlMcxRUfZZn1Q5KLS7xDFzuZIUVB7jKJ1C3wFQFu7nrhdrWQPk5M5QBbHINRjY/s320/Santa+Claus+Figure+in+a+Tub.png" width="320" /></a></div>
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Eric Carnevalehttp://www.blogger.com/profile/02268102785853628646noreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-68018966634269151832015-12-15T12:58:00.000-05:002015-12-15T12:58:07.794-05:00Samsung Appeals to the Supreme Court! ... (but probably won't get there)<div class="tr_bq" style="text-align: justify;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjiclokfwTpz3HOYyGpL5paAunixMfqljnmrh5lIQyiygGw0vCDFBzz76f3dfw_iu9m8WKUi4ESacQXZ4wX3Ud4pYUMptyI9DeDJKtojiR57yRlvZAT2YZEYy1mAvJMp4VkQvdrBG3ELHQB/s1600/apple-vs-samsung.jpg" imageanchor="1" style="clear: left; float: left; margin-bottom: 1em; margin-right: 1em;"><img border="0" height="133" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjiclokfwTpz3HOYyGpL5paAunixMfqljnmrh5lIQyiygGw0vCDFBzz76f3dfw_iu9m8WKUi4ESacQXZ4wX3Ud4pYUMptyI9DeDJKtojiR57yRlvZAT2YZEYy1mAvJMp4VkQvdrBG3ELHQB/s200/apple-vs-samsung.jpg" width="200" /></a>It's not every day that the New York Times <a href="http://www.nytimes.com/2015/12/15/technology/apple-samsung-supreme-court-patent-case.html?_r=0">reports on design patent news</a>. But when it does, it usually has something to do with smartphones. </div>
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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 <a href="http://appleinsider.com/articles/15/12/04/samsung-agrees-to-pay-apple-548m-in-patent-row">agreed to pay</a> 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. </div>
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In its petition for <i>writ of certiorari</i>, 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. </div>
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Of course, Samsung worded the questions presented somewhat differently:</div>
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<i>The questions presented are:</i></blockquote>
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<i>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?</i></blockquote>
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<i>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?</i></blockquote>
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Regardless of how Samsung chooses to articulate the issues, however, a Supreme Court hearing seems unlikely, in the opinion of this author. </div>
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With respect to the first issue, the Federal Circuit did an excellent job of clarifying its own, somewhat confusing precedent from cases like <i><a href="https://scholar.google.com/scholar_case?case=4065677538492368378">Richardson v. Stanley Works</a></i>. In Apple v. Samsung, the court explained that that the functional aspect of a claim may be <i style="font-weight: bold;">conceptually</i> factored out as part of claim construction without literally "exclud[ing] those components in their entirety." <i>See </i>our earlier post on this topic <a href="http://www.theordinaryobserver.com/2015/05/after-apple-v-samsung-what-is-left-of.html">here</a>. 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. </div>
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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:</div>
<blockquote class="tr_bq" style="text-align: justify;">
<i>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.</i></blockquote>
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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. </div>
Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-2503442125096583732015-12-04T11:20:00.000-05:002015-12-04T11:20:17.426-05:00A Cautionary Tale: How Not Marking a Product Can Cost a Design Patent Owner<div style="text-align: justify;">
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. <i>See Gallagher et al. v. Funeral Source One Supply and Equipment Co., Inc.</i>, 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. </div>
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhYNj8CbPsr4UzMWstJB67KO_13l6_UrurwkoT-sn8Q6zaQYcFKPZ6tj7r__91v5FaxD_bqo1r3cMefQT98m8SwPZr_JFLqQz75qFnOQ0x_yZMa_33HWMs583crYfVqkTL7mpiXC_jmpYzE/s1600/Gallagher.png"><img border="0" height="136" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhYNj8CbPsr4UzMWstJB67KO_13l6_UrurwkoT-sn8Q6zaQYcFKPZ6tj7r__91v5FaxD_bqo1r3cMefQT98m8SwPZr_JFLqQz75qFnOQ0x_yZMa_33HWMs583crYfVqkTL7mpiXC_jmpYzE/s200/Gallagher.png" width="200" /></a></div>
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Plaintiff Robert Gallagher owns and operates Instrument Design and Manufacturing Co. (“IDM”). IDM sells a funeral industry product known as an injector needle driver, for which Gallagher holds design patent D460,174. At all relevant times, however, neither Gallagher nor IDM marked the driver with its patent number. Defendant Affordable Funeral Supply, LLC (“AFS”) sold 48 allegedly infringing drivers through its own website and on third-party websites. Defendant Funeral Source Ones Supply ("FS1") bought 25 allegedly infringing drivers from AFS and resold them.<br />
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However, as a result of summary judgment, Gallagher's claim for damages was limited by 35 U.S.C. § 287(a)’s marking requirements. When a patentee inadequately marks a covered product, § 287(a) restricts damages to infringement occurring after the defendant received actual notice of the alleged infringement. Actual notice requires the patentee to “provide sufficient specificity regarding its belief that the recipient may be an infringer.” <i>Gart v. Logitech, Inc.</i>, 254 F. 3d 1334, 1346 (Fed. Cir. 2001). On January 17, 2014, Gallagher told the president of FS1 that his driver was patented, but did not identify the patent, and did not communicate that FS1 might be infringing, let alone ask them to abate their infringement. Judge Barbadoro ruled that this conversation did not amount to actual notice because it was a mere admonishment not to infringe and did not identify the patent or any allegedly infringing product.</div>
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Gallagher did, however, provide the patent number to third-party websites Amazon and eCrater on March 1, 2014 in emails notifying them that their injector needles were copies of his design. eCrater forwarded Gallagher’s complaint to AFS on March 3, 2014, and deactivated the driver’s product page on its website. Judge Barbadoro determined that eCrater's email to AFS was not sufficient to convey actual notice because the patentee himself must notify the infringer of the alleged infringement. <i>See Lans v. Digital Equipment Corp.</i>, 252 F.3d 1320, 1328 (Fed. Circ. 2001). </div>
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Finally, on March 6, 2014, Gallagher emailed both AFS and FS1 identifying the patent, notifying them of the counterfeit copies, and demanding that they remove the driver from commerce. Gallagher and IDM brought this action on March 20, 2014, and AFS removed the image of the allegedly counterfeit driver from its website on April 10, 2014. Judge Barbadoro ruled that actual notice was therefore conveyed on March 6, 2014, when Gallagher emailed both AFS and FS1. </div>
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Judge Barbadoro then considered whether Gallagher suffered compensable infringement damages after this date, as dictated by 35 U.S.C. § 287(a). Even construing the evidence the light most favorable to Gallagher, it proves at most that AFS completed its last sale of an allegedly infringing driver on January 21, 2014, and that FS1 completed its last sale on March 4, 2014. Therefore, there was no basis in the record to award Gallagher lost profits for any infringing sales after March 6, 2014. Further, Gallagher presented insufficient evidence of likely future infringement, and the claim for injunctive relief was denied. Defendants were therefore entitled to summary judgment on the claim of patent infringement. </div>
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The moral of the story is that, whenever possible, design patent owners should seek to meet the marking requirements of § 287(a) in order to preserve the right to later seek damages, including the infringers' profits. </div>
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Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-38625257330857335242015-11-06T15:29:00.001-05:002015-11-06T15:29:50.162-05:00Design Patent Remedies - Nordock v. Systems, Inc. (Fed. Cir. 2015)<div style="text-align: justify;">
Recently, the Federal Circuit addressed the dichotomy between standard patent damages under 35 U.S.C. 284 and design patent specific remedies under 35 U.S.C. 289. In <em><a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1762.Opinion.9-25-2015.1.PDF">Nordock v. Systems Inc</a>.,</em> No. 14-1762 (Fed. Cir. Sept. 29, 2015), the Federal Circuit articulated, "[i]n the case of design patent infringement, a patentee can recover damages under 284 <i><b>or under</b></i> 35 U.S.C. 289 . . . ", but not both. (Emphasis added). While prior to <i>Nordock</i> this was already understood to be the correct law, we now have a case that confirms that a design patent holder may elect to receive an award under section 284, or section 289, whichever is larger. For the particulars of Nordock v. Systems follow the jump.</div>
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<tr><td style="text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhZqt7J9FP85I-MKsYZVK7G0CIR_Fg8N24b1OaSdqULECo_ZmDJw6Zz8XSs5Gre9ttXQRRH91VH9SyrAMH4yo0w82rhra018jg2izVp7-kS3pvV9QcCZAERL_QtLkIyC-BTkUrJRcgjJJsF/s1600/Nordock.png" imageanchor="1" style="margin-left: auto; margin-right: auto;"><img border="0" height="222" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhZqt7J9FP85I-MKsYZVK7G0CIR_Fg8N24b1OaSdqULECo_ZmDJw6Zz8XSs5Gre9ttXQRRH91VH9SyrAMH4yo0w82rhra018jg2izVp7-kS3pvV9QcCZAERL_QtLkIyC-BTkUrJRcgjJJsF/s320/Nordock.png" width="320" /></a></td></tr>
<tr><td class="tr-caption" style="text-align: center;">D579,754</td></tr>
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Nordock and Systems are competitors in the loading dock device industry. Both companies design, manufacture, and sell devices for creating a bridge between a loading dock and a truck bed. Nordock's design patent (D579,754) claims the ornamental design of a lip and hinge plate for one such dock leveler (FIG. 1 shown above). A jury found that System's hydraulically operated dock levelers infringe the Nordock D'754 design patent and that the patent was not invalid. The jury entered a judgment awarding Nordock $46,825 in damages as a reasonable royalty, indicating on the verdict form that Systems' profits from the infringing products were $0.</div>
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On appeal, the Federal Circuit vacated the jury's damages award, remanding the case for a new trial on damages. Despite Systems' urging that the jury's award of a reasonable royalty was supported by substantial evidence and should not be disturbed, the court determined that a new trial was necessary to address damages under 35 U.S.C 289. The Court enunciated that in a case of design patent infringement a patentee can recover damages under section 284 or under 289. In reaching the determination that a new trial was necessary, the court agreed that there was no credible evidence that Systems' total profits for sale of the infringing levelers was $0. In fact, the court noted that taken together, Systems' expert testimony and expert report revealed that total profits on the infringing hydraulic levelers were at least $630,881, a far cry from $0.</div>
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Section 284, which is not limited to design patent infringement, provides two alternative categories of compensatory damages: "the patentee's lost profits and the reasonable royalty he would have received through arms-length bargaining." In contrast, section 284, which provides additional remedies for infringement of a design patent, permits design patentees to claim either $250 or "the infringer's 'total profit' on sales of 'any article of manufacture' to which the patented design was applied." While unfortunate for patentees, double-dipping is not allowed, as recovery under both section 289 and section 284 is not permitted.</div>
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Summed up, a design patentee has three mutually exclusive options: 1) total profits from the infringer's sales under section 289; 2) standard patent damages under section 284; or 3) $250 under section 289 (if greater than the infringer's total profits or damages). Based on <i>Nordock</i>, it is now even clearer that design patent plaintiffs are entitled to whichever remedy yields the maximum award.</div>
Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-29439913976563472072015-10-19T09:59:00.001-04:002015-10-19T09:59:30.361-04:00Who is a Design Patent Inventor, and Who is Merely Assisting<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEj9QB14lxXvn7SpoWG_WVgE_8wosc8D0H-9CRMulCs-HcVr3z9GEGa22ANB7cbtZi7Km9dNay8J33Y5mognau-4oRxMVdJF7SBNauSj7Oen9b4WXMAAyB0h59UqDnh2wUPv4gkEVQOSWXU8/s1600/Lightbulb.png" imageanchor="1" style="clear: left; float: left; margin-bottom: 1em; margin-right: 1em;"><img border="0" height="200" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEj9QB14lxXvn7SpoWG_WVgE_8wosc8D0H-9CRMulCs-HcVr3z9GEGa22ANB7cbtZi7Km9dNay8J33Y5mognau-4oRxMVdJF7SBNauSj7Oen9b4WXMAAyB0h59UqDnh2wUPv4gkEVQOSWXU8/s200/Lightbulb.png" width="198" /></a></div>
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<span style="font-family: "Times New Roman","serif"; font-size: 12.0pt; line-height: 115%;">Under U.S. patent law, a design patent must identify
the true inventor of the subject design.
However, it is not always abundantly clear who should
be named as an inventor, and who is merely assisting an inventor. Design patents
may be obtained by [w]hoever invents any new, original and ornamental design
for an article of manufacture.” 35 U.S.C. § 171 (1994). While inventorship is a question of law, it
is based on underlying facts. When determining inventorship, it is imperative to ask: which individual or individuals “conceived” of the
claimed invention? That is, who conceived the arrangement of elements of the ornamental subject matter represented in the
figures of the design patent. <i>Safco Products Co. v. Welcom Products, Inc.</i>, 799 F. Supp. 2d 967
(2011). As there are often many people working to bring the subject matter of a design patent to fruition, this determination is not always so simple. Read on to learn how to identify an inventor, and those merely assisting.</span></div>
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<span style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;">When a group of individuals work in concert to conceive a new and original ornamental design for an article of manufacture, each individual must generally contribute to conception of a permanent and definite idea of the ornamental design to be considered a joint inventor. </span><i style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;">Ethicon, Inc. v. United States Surgical
Corp.</i><span style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;">, 135 F.3d 1456, 1460 (Fed. Cir. 1998). An idea of a design is sufficiently definite and
permanent when only ordinary skill would be necessary to reduce the invention
to practice, and extensive research or experimentation would not be needed. </span><i style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;">Id.</i><span style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;"> However, each contributor need not make the same type, or amount, of contribution to the invention.
Rather, each needs to perform only a part of the task which produced the
invention. </span><i style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;">Id.</i><span style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;"> </span><span style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;">Once the idea has been conceived, an inventor
may then use the services, ideas, and aid of others in the process of
perfecting his invention without losing his right to a patent. Importantly, one may not qualify as an inventor by merely
assisting in reducing the idea to practice, after it has been conceived. To qualify as an inventor, the assister must
make substantial, not just superficial, changes to the design; the new design
must contain an inventive concept. </span><i style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;">Id.</i><span style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;">
A court will determine whether the revised design is substantially
similar to the first. </span><i style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;">Gorham Mfg. Co. v. White</i><span style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;">, 81 U.S. 511,
528 (1871). If the court determines that the revised design is substantially similar to the original design, the assister will not be considered an inventor.</span></div>
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<span style="font-family: "Times New Roman","serif"; font-size: 12.0pt; line-height: 115%;">If omitted, a contributor to a new and original ornamental design may still seek to be designated as an inventor. In such a case, the purported inventor must produce corroborating evidence to support testimony that she conceived of the invention.
<i>Acromed Corp. v. Sofamor Danek
Group, Inc.</i>, 253 F.3d 1371, 1379 (Fed. Cir. 2001). Reliable evidence of corroboration preferably
comes in the form of physical records that were made contemporaneously with the
alleged prior invention. Circumstantial
evidence and oral testimony of someone other than the alleged inventor may also be used to corroborate inventorship. <i>Trovan, Ltd. V. Sokymat SA</i>, 299 F.3d 1292, 1302-03 (Fed. Cir. 2002). Although the existence of corroborating
evidence does not present a prima facie case of inventorship, it places the
burden of rebuttal evidence on the patentee. <i>Innovative
Scuba Concepts, Inc. v. Feder Industries, Inc.</i>, 26 F.3d 1112, 1115 (Fed.
Cir. 1994).</span></div>
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<span style="font-family: 'Times New Roman', serif; font-size: 12pt; line-height: 115%;">In sum, a design patent inventor is one who
conceives of the claimed invention.
While in some circumstances this may include multiple individuals, those who merely assist in perfecting the invention should not be named as inventors.
If an alleged inventor sues on the basis of non joinder of an inventor,
she must present corroborating evidence to shift the burden of rebuttal evidence on the patentee. </span></div>
Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-19664050902442484072015-10-01T18:05:00.002-04:002015-10-02T16:23:47.987-04:00In Hunter's Edge v. Primos, The Ordinary Observer is Clearly No Turkey...<div style="text-align: justify;">
Perhaps we should have waited until Thanksgiving to share this case, but some things just can't wait. On Tuesday, Judge Myron Thompson of the Middle District of Alabama granted Primos' motion for summary judgment of no infringement in the case of <i>Hunter's Edge v. Primos</i>. The case represents strong precedent that two-dimensional design patents cannot be infringed by three-dimensional articles of manufacture. However, the case may be just as interesting for the issues that were left undecided, such as whether Hunter's Edge's design patent represents an unpatentable "design of nature." You be the judge, after the jump. </div>
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh0JwXYQiINUo0R89gNaJuUnx5Meg0DNqM2F6eR-OVa3NFRWCossFTWj8ERbX5ZpsKrdZz_qyVDv896wRrqH8eORfyrty8iJwC8BpuY7CKuqqUuuQOyfQIYL6pC46kgAYrb-DvXLIz9f8HA/s1600/Primos+Killer+B.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="160" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh0JwXYQiINUo0R89gNaJuUnx5Meg0DNqM2F6eR-OVa3NFRWCossFTWj8ERbX5ZpsKrdZz_qyVDv896wRrqH8eORfyrty8iJwC8BpuY7CKuqqUuuQOyfQIYL6pC46kgAYrb-DvXLIz9f8HA/s320/Primos+Killer+B.png" width="320" /></a></div>
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This case comes to us from the Middle District of Alabama, where few things are as important (or apparently as contentious) as a turkey shoot. In this case, Hunter's Edge was asserting its U.S. Design Patent No. 560,745 (pictured above) directed to a "Turkey Feather and Head Fan Decoy" against Primos' "Killer B" turkey hunting decoy (above, at left). </div>
<span style="text-align: justify;"><br /></span>
<span style="text-align: justify;">Early in the case, Primos moved for summary judgment on three grounds:</span><br />
<ol>
<li style="text-align: justify;">“the patents are invalid because they <i><b>do not include a new, original design</b></i>, but only photographic reproductions of actual turkey tail feather fans <i><b>already existing in nature</b></i> and widely known in the prior art”</li>
<li style="text-align: justify;">“the asserted patents are invalid as a matter of law because they are either anticipated or would have been obvious to one of ordinary skill in designing turkey decoys” and</li>
<li style="text-align: justify;">Defendant’ products do not infringe Plaintiff’s design patents because Defendant’s products “are lifelike full sized, <i><b>three-dimensional turkey decoys”</b></i> which no ordinary observer would purchase thinking it to be Plaintiff’s patented design. </li>
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Because the Court was persuaded that the decoys were too dissimilar for the case to proceed to a jury trial, the Court only considered non-infringement. In general, the Court found that infringement here was not possible, at least because the asserted design patents are two-dimensional, whereas the accused design was three-dimensional:</div>
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Upon viewing the pictorial depictions of Plaintiff’s claimed designs and Defendant’s accused products, the undersigned is of the conviction that no reasonable fact-finder could find that any ordinary observer could be induced to purchase one of the accused products thinking it to be Plaintiff’s claimed design. Plaintiff’s claimed designs are flat, two-dimensional photographic reproductions of a turkey’s tail feather fan both with and without a turkey head superimposed over the fan. Defendant’s accused products are lifelike three-dimensional model decoys featuring molded plastic bodies to which a component tail feather fan is attached. <b><i>Simply put, no ordinary observer—that is, a turkey hunter intending to purchase a turkey decoy—would confuse the accused products with Plaintiff’s designs. </i></b></blockquote>
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In terms of infringement, this case seems rather straightforward, and it seems clear that, unless the "ordinary observer" in this case was determined to be an actual turkey, nobody would fail to distinguish between this claimed design and the accused product. </div>
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However, the more interesting issue here appears to be whether Hunter's Edge's design patents are valid at all. For example, the design patents appear to claim photographs of actual turkeys cutout and applied to a fan structure. As Primos argued, this likely implicates the "<a href="http://www.theordinaryobserver.com/2013/10/is-there-design-of-nature-exception-for.html">designs of nature</a>" exception to design patent protection, which we have posted about before. Here, because the claimed design was created by evolution, there does not appear to be any inventive contribution to the claimed design, other than sticking it onto an <i style="font-weight: bold;">unclaimed</i> fan:</div>
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiLuCMFs41QnGIrJR1RuS-ukvpIMM_S8vTfoDkxozQpQLAq1PvurD4wD9-ats6TjL7iyI_PHk8X-0yvyEL1OBlOeYlyoBHN0q8jgHW1abRDK_yIbp58fUUed3sellJ9yhS8uk5CXoWYQ971/s1600/Invalid+Turkey.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="243" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiLuCMFs41QnGIrJR1RuS-ukvpIMM_S8vTfoDkxozQpQLAq1PvurD4wD9-ats6TjL7iyI_PHk8X-0yvyEL1OBlOeYlyoBHN0q8jgHW1abRDK_yIbp58fUUed3sellJ9yhS8uk5CXoWYQ971/s400/Invalid+Turkey.png" width="400" /></a></div>
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The issue of naturally occurring designs is even more relevant here, given the Court's claim construction, which interpreted the design as being naturally occurring:</div>
<blockquote class="tr_bq" style="text-align: justify;">
The ‘745 patent should be construed as designs comprising <i><b>a semi-circular shaped photographic reproduction of a natural turkey tail feather fan and turkey’s head</b></i>. (emphasis in original). </blockquote>
<div style="text-align: justify;">
Kuddos to Primos for picking up on this often-overlooked and misunderstood doctrine in design patent law. </div>
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Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-2897050813909607851.post-77179369448065805032015-09-16T12:22:00.001-04:002015-09-16T12:22:43.426-04:00High Point Designs Part II - "Overall Appearance" Does Not Mean "Abstract Design Concept"<div class="MsoNormal">
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In round two of <i>High Point Design v. Buyer's Direct</i>, (i.e. the<i> </i>fuzzy slipper case), the Federal Circuit held that a design patent for the ornamental appearance of a fuzzy slipper held by Buyer’s Direct, Inc. (“BDI”) was not anticipated by an alleged prior art slipper. On the other hand, the Federal Circuit also held that meaningful differences in the overall visual effect of the design patent and an alleged infringing product supported a summary judgment determination of non-infringement. <i>See <a href="https://drive.google.com/file/d/0B0V5Kq8qLmvaMExFNWkyOU1WZFk/view?usp=sharing">High Point Design LLC v. Buyer’s Direct, Inc.</a></i>, No. 14-1464 (Fed. Cir. July 30, 2015).</div>
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgmpFJ0RFUwJO2goY_NbuDmNVZ2eha-Niwinff3C3k8fBGNaiW2mtDrk9nc8MwWHDOI4zqaVzU3CposKLp2E_cHUFWKnF5hjIUlUOohKSb9Vc33R_v7ulW1EdufiHQYgFxlJEPvuNz14nTR/s1600/slippers.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="235" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgmpFJ0RFUwJO2goY_NbuDmNVZ2eha-Niwinff3C3k8fBGNaiW2mtDrk9nc8MwWHDOI4zqaVzU3CposKLp2E_cHUFWKnF5hjIUlUOohKSb9Vc33R_v7ulW1EdufiHQYgFxlJEPvuNz14nTR/s400/slippers.png" width="400" /></a></div>
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<span style="font-family: inherit;">Buyer's Direct's design patent, D598,183 is for the ornamental appearance of a fuzzy slipper
as shown and described in eight figures. Figures 1 and 4 are shown above. High Point manufactures and distributes the accused FUZZY BABBA®
slipper (shown below). Upon learning of the Fuzzy Babba slipper, Buyer's Direct sent a
cease and desist letter to High Point and High Point responded by filing
a declaratory judgment action claiming that the ’183 Patent was invalid and that the design of the accused product did not infringe. You can read our analysis of the first trip to the Federal Circuit in this case <a href="http://www.theordinaryobserver.com/2013/10/obviousness-inquiry-for-design-patents.html">here</a>. On this second appeal to the Federal Circuit, the court reviewed
the district court’s grant of summary judgment of invalidity and
non-infringement.</span></div>
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhCwtdZlqTQ72le2eR7yrJPYPlGe9Qu4srItnXmHiJbDCi2YahdKsjCM1VfJnrdqQOqFxDNIZYajCrlBBUyLSCZKl6NR7M_RnOqBWsr034PfFkIPQhOoHopmTols5HuaQPgF93fjlDOZ51B/s1600/Fuzzy+Babba.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="92" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhCwtdZlqTQ72le2eR7yrJPYPlGe9Qu4srItnXmHiJbDCi2YahdKsjCM1VfJnrdqQOqFxDNIZYajCrlBBUyLSCZKl6NR7M_RnOqBWsr034PfFkIPQhOoHopmTols5HuaQPgF93fjlDOZ51B/s400/Fuzzy+Babba.png" width="400" /></a></div>
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<span style="font-family: inherit; text-indent: 0.5in;">Regarding invalidity, the Federal
Circuit performed a side-by-side comparison of the ’183 Patent and the prior
art (Laurel Hill slipper and Penta slipper shown above) noting that there
were meaningful differences between the slipper designs overlooked in the
district court’s analysis. Specifically, the Court </span><span style="text-indent: 0.5in;">criticized</span><span style="font-family: inherit; text-indent: 0.5in;"> the district
court’s analysis of the ’183 Patent as doing little more than pointing out the
main concepts of the claimed design as “a structural slipper having fuzzy
material at the foot opening.” In comparing the prior art and the ’183 Patent,
the court pointed to differences in the curvatures of the slipper bodies, the
protruding fuzz, and the ornamental aspects of the soles. Based these features,
the Court held that “the evidence is not so clear and convincing such that a
reasonable fact-finder could not find for Buyer's Direct on anticipation.”</span></div>
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<span style="font-family: inherit; text-indent: 0.5in;">Regarding non-infringement, the
Federal Circuit concluded that “the patented and accused designs bring to
mind different impressions.” The court noted that whereas the Fuzzy Babba
slipper appears “soft and formless,” the claimed design appears “structured and
formed.” Further, the Federal Circuit identified meaningful differences in the
soles, as the Court did when performing the invalidity analysis. Based on these findings,
the Court agreed with the district court that a comparison with the prior art
was not necessary for a ruling on infringement, and a judgment of
non-infringement was appropriate.</span></div>
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<span style="font-family: inherit; text-indent: 0.5in;">While this disposition was non-precedential,
it does offer some insight as to how the Federal Circuit is scrutinizing judgments
of invalidity and non-infringement. A recurring theme in the decision is that
the distinctive visual appearance of the claimed design must be considered when
performing a side-by-side comparison with prior art. Distillation of the visual
appearance to a high level of abstraction will not support a summary judgment decision
of invalidity. Similarly, high-level similarities between a claimed design and
an alleged infringing product will not be sufficient to demonstrate
infringement. While the <i>High Point</i> decision doesn't announce a return to the old "point of novelty" test, it does seem to suggest that assessing the "overall appearance" of a design does not mean reducing the design to a design <i>concept</i>. </span></div>
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<o:p></o:p></div>
Unknownnoreply@blogger.com0