Design Patent Links - February 4, 2013

The last two weeks in design patent law brought us a Federal Circuit decision on pleading standards and several noteworthy decisions in the Apple v. Samsung cases, but there were several other smaller developments that caught our attention.  So, without further ado, we present this week's design patent links:

Several commentators offered their take on the Federal Circuit's decision in Hall v. Bed, Bath & Beyond, Inc., including Patently-O, and Dow Lohnes.  You can read our original commentary here.

In a new twist in the long and hard fought battle between Samsung and Apple, the ITC has recently issued a notice of review of the Final Initial Determination issued in October of 2012 by Administrative Law Judge Pender.  In that decision, ALJ Pender held that deceptive similarity is not "a prerequisite to a finding of infringement, but merely a consequence, or result, of the designs being substantially the same. . . . [T]he sole test for design patent infringement is whether the claimed design is 'substantially the same' as the accused design in the eye of the ordinary observer, giving such attention as a purchaser usually gives. . . . I have kept it in mind that a purchaser of the kind of devices at issue in this investigation will pay significant attention to what they are buying."  The notice of review can be found here.  ALJ Pender's order from last October can be found here.  As correctly reported by Lexology, the only new development in this story is the ITC's decision to review his findings.

In other Apple-related news, last week some commentators incorrectly reported that Apple was awarded a design patent for the appearance of its stores. However, it appears that Apple merely registered its iconic trade dress.  This accidentally raises an interesting question as to whether a store front could qualify as an "article of manufacture" under section 171...

Bill Harding of Zeis Weiderman, Malek, posted an interesting discussion of animated computer-generated icons design patents and special procedures available for prosecuting such patents before the PTO.  This little-known type of design patent has special procedures that have been in place since 2005 for this unique type of design patent.

For those who are interested, the Intellectual Property Owners Association will be offering a webinar for CLE credit on February 6 at 2:00 PM ET titled Design Patent Protection: An International Overview Including the Hague Agreement.  The webinar will cover  changes that the Hague Agreement will bring to design patent law, which continues to be a worthy topic of discussion. 

For those of you in the Portland, Oregon area, Lane Powell attorneys Brenna Legaard and Jay Smith-Hill will co-present group breakout sessions at the Technology Association of Oregon’s “Legal Forum: Trademark, Copyright, and Design Patent Boot Camp” at the Oregon Zoo on February 14 from 7:30 a.m. to noon. Brenna Legaard will be presenting on design patents.  

Finally, on February 3 at 1 PM ET, the American Bar Association Section of Intellectual Property Law and MARQUES (the European Association of Trade Mark Owners) are co-hosting a webinar discussion regarding EU design law and some of the differences with U.S. design patent law. The session will cover what subject matter is protectable, the validity tests of “novelty” and “individual character,” the exclusion for “solely dictated by technical function,” registered (25 years) and unregistered (3 years) Community design rights, and enforcement. The webinar will also touch on some of the similarities and differences with the Community Trade Mark regime.

Federal Circuit Alert – Hall, et al. v. Bed Bath & Beyond, Inc., No. 2011-1165, -1235

On Friday, January 25, the Federal Circuit issued its decision in Hall, et al. v. Bed Bath & Beyond, Inc., --- F.3d ----, 2013 WL 276080 (Fed. Cir. 2013), reversing the decision of the Southern District of New York, dismissing the case.  In this case, Hall is asserting its Design Patent No. 596,439 for a “Tote Towel.”  Below is a figure from the ‘439 Patent alongside a comparison provided in Hall’s complaint:

Interestingly, Hall appealed the decision of the district court despite the fact that Judge Hellerstein granted Hall leave to amend.   Judge Lourie’s dissenting opinion focuses on that fact and proposes penalizing Hall for declining the opportunity to amend.  Nevertheless, the Federal Circuit’s decision to reverse appears to be the correct decision.  

 

At the district court, Bed Bath & Beyond argued that Hall’s complaint failed to include factual allegations plausibly suggesting that the accused products infringed the ‘439 Patent under the Supreme Court’s decisions in Ashcroft v. Iqbal and Bell Atl. Corp. v. Twombley.  Specifically, the defendants argued that the complaint was insufficient because it failed to include any allegations relating to how the ‘439 Patent should be construed.  Evidently, Judge Hellerstein agreed and held that the complaint should have included answers to questions such as: “What is it  about Plaintiff’s towel that he claims is ‘new, original and ornamental,’ meriting the protection of a design patent?”    

The Federal Circuit began its analysis by citing its pre-Iqbal and Twombley decision regarding the pleading requirements in a design patent case - Phonometrics, Inc. v. Hospitality Franchise Systems, Inc.,  203 F.3d 790 (Fed. Cir. 2000).  There, the Federal Circuit held that the pleading requirement in design patent cases is no different than in a utility patent case.  All that is required are the basic elements of Form 18 – “(i) allege ownership of the patent, (ii) name each defendant, (iii) cite the patent that is allegedly infringed, (iv) state the means by which the defendant allegedly infringes, and (v) point to the sections of the patent law invoked.”  As with complaints in utility patent cases, Iqbal and Twombley did not alter this basic requirement. 

The Court then went on to explain that Hall’s complaint was adequate.  The Court reasoned that “Hall’s  complaint identified the patent, showed the patented design, and described the accused towel as follows: ‘¶27.  The Counterfeit Towel is virtually identical in design to the Tote Towel.  It  [has]  the same shape and almost the same dimensions -- 50” x 9.”  The Counterfeit Towel also features the Tote Towel’s unique zippered compartments and hanging loop.  In fact, the inseam of the Counterfeit Towel, from one pocket to the other, is exactly the same length as that of the Tote Towel.”  Notably, the images in Hall’s Complaint also appear to support a plausible claim of infringement at first blush. 

While Hall v. Bed Bath & Beyond, is not a watershed decision, it may be interpreted by some as altering the pleading requirements for an allegation of design patent infringement or as holding that Iqbal and Twombley had no impact on the pleading requirements for design patent infringement.  However, in the author’s opinion, Hall should be understood as an isolated situation where the complaint clearly made a plausible allegation and should not have been dismissed.  However, this case should not be construed as precluding a Rule 12(b)(6) dismissal, where the design at issue and the accused product (if shown in the complaint), clearly show an implausible (or frivolous) claim for design patent infringement.