Design Patents Cover Designs, Not Concepts... Usually

There was only one design patent case filed this week, so I've decided to focus this post on a reoccurring issue in design patent law instead of our usual Friday roundup of new design patent cases.  As I noted in last week's roundup, there have been several recent design patent cases  representing a recurring theme - plaintiffs who incorrectly believe that their design patent covers a concept as opposed to a design.  This misconception is the cause of many dubious design patent infringement claims, and is only exacerbated when counsel fail to properly explain the purpose of a design patent, both during prosecution and prior to commencing litigation.  

Last week's design "concept" case was Chuck Roaste, LLC v. Reverse Gear, LLC et al, No. 1-14-cv-01109 (N.D. Oh. May 22, 2014).  This lawsuit deals with a design concept for reversed trousers, having pockets on both the front and the back of the garment so that it may be worn either forwards or backwards.  The problem with the Chuck Roaste lawsuit, in this author's opinion, is that the examples of alleged infringement in the complaint tends to demonstrate non-infringement in the eye of the ordinary observer.  This suggests that the lawsuit has less to do with Chuck Roaste's design patents and more to do with the plaintiff's belief that the design patent-in-suit covers the concept of reversible pants, which it cannot.  For example, one of the figures of the '055 Patent, as shown in the Complaint, claims a leopard print pattern on both the belts and the pockets, which do not appear on the accused Reverse Gear jeans.  In my experience people rarely confuse leopard print with plain old denim...

  

This week's sole design patent case presents a similar design "concept" litigation.  On Wednesday, one Victoria Burnett filed the case of Burnett v. Bevacqua-Brewer et al, No. 1-14-cv-01706 (D. Md. May 28, 2014).  This is essentially a lawsuit between two individuals that make pet beds out of vintage, used luggage.  The design patent-in-suit is U.S. Patent No. 677,840, titled "Suitcase Pet Bed."  Again, the problem with this case is one of design patent scope.  As shown below, the '840 Patent covers a particular pet bed, not the concept of making a bed for an animal out of an old suitcase. Nor does the '840 Patent include any alternative embodiments.  For some reason. Ms. Burnett elected to claim her design concept using only a generic rectangular suitcase, with a generic handle, and generic locks, as shown below:  

However, the pet beds made by the named defendant, Anna Bevacqua-Brewer, are not limited to such mundane designs.  As shown on her website, she applies this concept to a vast array of vintage suitcases, each having a  design that is noticeably different from the suitcase claimed as part of the '840 Patent.  Indeed, I was unable to find any suitcases on Ms. Bevacqua's website that used a suitcase similar to the one claimed as part of the '840 Patent.  Ms. Burnett's decision to claim a particular vintage suitcase in her design patent would likely doom her case to failure, but for the cost of defending even a frivolous case of design patent infringement (Octane Fitness aside). 

Design patent scope has always been a tricky issue, but there are some guiding principles that can help steer courts and would-be plaintiffs down the right path.  Design patent guru, Perry Saidman is fond of reminding practitioners that design patent scope has almost as much to do with the prior art as it has to do with the dashed and solid lines within the figures.  A proper infringement assessment cannot be made without looking at both asserted design, the accused product, and the prior art.  See, e.g., Saidman, Perry, Egyptian Goddess Exposed! But Not in the Buff(er)..., 90 J. Pat. & Trademark Off. Soc'y 859, 877 (2008) (discussing the prior art implications of Smith v. Whitman Saddle Co., 148 U.S. 674 (1893)).  In general, the more crowded the field of prior art is, the more narrowly a design patent should (or would) be interpreted by an ordinary observer.  Conversely, if a design patent is a true "pioneer" design patent, one might expect its scope to be somewhat broader in the eye of the ordinary observer.

Yet, even a pioneer design patent cannot overcome clear claim limitations based on solid lines, and a design patent can only be expanded so far in the ordinary observer's mind by the state of the prior art.  In this author's opinion, even a total dearth of relevant prior art should not permit a design patent to preclude all further applications of a design concept, like "making pet beds out of suitcases."  To do so would improperly convert a design patent into some kind of bizarre aesthetic utility patent.  Design patents are meant to cover designs, not design concepts... usually.  

Pacific Coast after the Federal Circuit - Windshield Vents in the Eye of the Ordinary Observer

Last week, The Ordinary Observer reported on the Federal Circuit's recent decision in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, holding for the first time that prosecution history estoppel applies to design patents, while finding in the case at bar that the patentee was not estopped from asserting its patent against the accused infringer.  We have noted since then that legal observers have followed this decision, and Pacific Coast has already issued a press release calling it a big win.  At this stage, it might be important to remind readers that this case may still have some legs left, and Pacific Coast may not want to open the champagne just yet.

Obviousness Inquiry for Design Patents – The Answer Is Not So Obvious

["Author's" note: this post was authored by David Lu, of Lando & Anastasi, and is based on a discussion of High Point that he recently presented during a monthly Federal Circuit review. David's practice includes patent prosecution, opinion work, due diligence, and general intellectual property counseling in the areas of biochemistry, molecular biology, cell biology, immunology, microbiology, genetics, and genomics. David now dabbles in design patent law as well.]

In High Point Design LLC v. Buyer’s Direct, Inc., Case No. 12-1455 (Fed. Cir. September 11, 2013) the Federal Circuit addressed several interesting issues surrounding how invalidity under 35 U.S.C. § 103 should be determined for design patents.

First, the court addressed what should be the standard for assessing the potential obviousness of a design patent. The court asked whether obviousness should be determined from the vantage point of an “ordinary observer” or “an ordinary designer” in the art? The Federal Circuit held that an “ordinary designer” standard is required in an obviousness analysis relating to a design patent and the use of an “ordinary observer” test would run contrary to the court’s precedent. Interestingly, in International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) the Federal Circuit ruled that the ordinary observer test is the sole test for anticipation of design patents. Here, the court did not say that the decision in International Seaway reached a contrary conclusion. Rather, the court suggested that the International Seaway court might in fact have had the designer of ordinary skill standard in mind when it used the term “ordinary observer.” After all, the ultimate inquiry is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.

It is unclear whether the ordinary designer test would make it easier or more difficult to invalidate a design patent or render it obvious. However, expert opinions will likely play a more important role in future battles for obviousness. Indeed, the court noted that a valid expert opinion cannot be disregarded just because an expert is an ordinary designer and not an ordinary observer.

The second issue the Federal Circuit addressed relates to claim construction in design patent cases. To evaluate the potential obviousness of a design patent, a fact finder must first find a single reference that teaches the design characteristics that are basically the same as the claimed design. In order to do that, a court must first discern the correct visual impression created by the patented design as a whole. The Federal Circuit relied on Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996), ruling that the district court erred by failing to translate the patented design into a verbal description. In particular, the court stated that the district court should add sufficient detail to its verbal description of the claimed design to evoke a visual image consonant with that design. Interestingly, in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) the Federal Circuit abolished the requirement for detailed verbal claim construction in design patent infringement cases. In fact, the Federal Circuit preferred that district courts not construe the claimed design with a detailed verbal description. The Egyptian Goddess court seemed to suggest that a different requirement should be in place for invalidity cases. However, the court in High Point did not clarify this distinction, nor provide guidance on what would constitute the “sufficient detail” in order to evoke the visual image necessary for obviousness analysis.

Further confusing the issue is whether High Point is even controlling on the issue of claim construction, given that Egyptian Goddess cautioned against verbal claim construction of design patents and was decided en banc.

Hire Order Loses Bid for Summary Judgment of No Design Patent Infringement Against Oakley

Last Thursday, an interesting decision came down in the design patent case of Oakley, Inc. v. Hire Order, Ltd, et al., No.  3:12-cv-02346 (S.D. Ca.).  This case concerns Oakley’s U.S. Design Patent No. 523,461, titled “Eyeglass Component.”  Oakley accuses defendants Hire Order, Ltd., Global One Sales, and Distribution Sportsman Eyewear, LLC (“Hire”) of infringing the ‘461 Patent by selling their “Sportsman Eyewear” brand.  Below is a figure from the ‘461 Patent alongside an image of Hire’s Sportsman Eyewear glasses.

Both Oakley’s patented glasses and the Sportsman’s Eyewear glasses are designed to allow the wearer to capture video of whatever he or she views.  

Oakley filed its complaint against Hire on September 26, 2012.  Hire Answered on December 11, 2012 and then quickly filed a motion for summary judgment of no infringement, which was the subject of the Court’s March 28 order.  While motions for summary judgment are usually filed long after the pleadings stage has ended in utility cases, an early motion for summary judgment can be an effective tool in design patent cases.  Although the ordinary observer test is a fact-intensive analysis, there are typically only two relevant facts for consideration – the appearance of the accused product and the figures of the design patent at issue.  Where the designs are not arguably deceptive, summary judgment of non-infringement may be appropriate on these two facts alone.  Furthermore, if an image of the accused product is attached to the complaint, defendants may even move to dismiss the complaint with prejudice.  In the context of design patents, there are few cases that would be ripe for summary judgment of no-infringement but would at the same time clear the “plausibility” hurdle of the Supreme Court’s decisions in Iqbal and Twombley. 

In ruling on Hire’s motion, Judge Sabraw began with the familiar adage that non-infringement, “requires a two-step analysis. ‘First, the claim must be properly construed to determine its scope and meaning.  Second, the claim as properly construed must be compared to the accused device or process.’” citing Terlep v. Brinkmann Corp., 418 F.3d 1379, 1381 (Fed. Cir. 2005).  However, as is the modern trend with design patents, the Court resisted entering a verbal claim construction, stating that “the preferable course ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description of the claimed design.” quoting Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008).  “Instead, the Court agree[d] with Plaintiff that ‘the D461 Patent should be construed as the ornamental design for an eyeglass component, as shown and described in Figures 1 through 6 of the patent.”  

With regard to non-infringement, Hire pointed to differences the overall shape of the arms and nose bridge of the ‘461 Patent versus the Sportsman glasses.  Hire also asserted that the Sportsman glasses have smooth arms while the arms on the ‘461 Patent are ribbed.  Hire also pointed to the fact that the buttons on its glasses have a different shape and less numerous.  

Oakley acknowledged these differences between the ‘461 Patent and the Sportsman glasses, but argued that “when the products are viewed as a whole, there is an ‘overwhelming similarity,” between it and the claimed design, or at a minimum, a question of fact.”  The court agreed with Oakley’s assessment, citing Egyptian Goddess, and reasoning that “‘mere difference of lines in the drawing or sketch ... or slight variances in configuration ... will not destroy the substantial identity.’”  Egyptian Goddess, 543 F.3d at 670 (quoting Gorham, 81 U.S. at 526-27).

Judge Sabraw’s decision stands as a reminder of the breadth of modern design patents. The Federal Circuit’s decision in Egyptian Goddess, jettisoning the point of novelty test, and warning against detailed verbal claim construction, has allowed design patent cases to proceed further in litigations than previously possible. Early dismissal and/or summary judgment remains an important tool in a defendant’s arsenal, but judges now seem less and less willing to dispose of design patent cases unless it is a clear case of non-infringement.

Design Patent Roundup – Week ending Dec. 14, 2012

A number of cases have been filed since our last roundup which we summarize below. Of particular interest this week is a case involving the now famous plaintiff Egyptian Goddess asserting another design patent for a nail buffer. As always, we will continue to monitor the dockets for these cases and provide any noteworthy updates.

How to Observe Ordinarily - Applying the Ordinary Observer Test

Int’l Seaway Trading Corp. v. Walgreens Corp.

In an interesting decision both in terms of the products at issue and for the extension of the Ordinary Observer test, the CAFC agreed in part with the lower court’s holding of anticipation, reversed in part and remanded for further consideration.
The design patents at issue covered lightweight footwear or “clogs.” Representative figures from the design patents (D529,263, D545,032 and D545,033) and the prior art (Crocs Patent D517,789) under consideration are shown below.

PRIOR ART




‘263 PATENT


The district court held that the Ordinary Observer test should be the only test to apply when evaluating a design. The Court granted summary judgment of anticipation under that test as to the exterior of the shoe, excluding the interior from consideration. The Court reasoned that an ordinary observer would not see the interior of the footwear while it was being worn. The CAFC agreed as to the test to apply and that the exterior of the shoe would be anticipated, but disagreed that the interior of the shoe should be ignored. The CAFC determined that Contessa, on which the district court relied, requires consideration of any features visible during normal use, and because normal use would include display of the footwear for sale, the interior could not be excluded. The CAFC held that district court failed to consider the design as a whole when it excluded the interior, and remanded the question of whether the difference in the interior of the shoes precluded a finding of anticipation or obviousness.

In a noteworthy dissent, Judge Clevenger questioned whether the remand was appropriate. To the dissent, remand for consideration of a single component of the shoe (the interior) conflicted with the as a whole test being endorsed. “The effect of the summation of all of the design differences is what counts, not the comparison of differences one by one, isolated from each other.”

The majority endorsed the Ordinary Observer test, eliminating the “points-of-novelty” test when determining infringement. Under the old test, one must show that accused device appropriated novel features of a patented design identified by the parties. As the CAFC acknowledged the debate over these points of novelty “encourage[es] the focus on minor differences between the allegedly anticipatory reference and the patented design.” The determination of the points-of-novelty typically dictated the result under this test, providing fertile ground for argument regarding any identified point of novelty. The Ordinary Observer test, however, focuses on the design as a whole – “in the eye of an ordinary observer . . . two designs are substantially the same, if the resemblance is such as to deceive such an observer.” In making this determination the ordinary observer is “deemed to view the differences between the patented design and the accused product in the context of the prior art.”

Although the Seaway decision makes clear that the Ordinary Observer test is the only test to apply, how the ordinary observer should view differences, and what weight to give differences between various elements when considering the design as a whole, may still need to be resolved by subsequent decisions.

The decision can be found here.