Judge Robinson Reverses on "Normal Intended Use"

Back in August, we reported on a decision from Judge Robinson on the issue of how to define the "ordinary observer," in the case of Poly America, L.P. v. API Indus., Inc..  This case concerns a design for a box for holding and dispensing household trash bags.  As part of that decision on API's unsuccessful motion for judgment on the pleadings, Judge Robinson also addressed whether the internal flaps of the accused cardboard box could be a distinguishing feature of the accused design.  Judge Robinson concluded that the internal flaps could not be a distinguishing feature of the accused design because they would not be visible during the normal, intended use of the accused product.  

As I interpret the above in the context of this case, I come to several conclusions. In the first instance, the "normal use" of the product at issue- a box containing plastic trash bags - extends well beyond the stage of manufacturing (where API would place the hypothetical purchaser) and retail sale to the homes of the retail consumers who open the boxes to use the bags. In this regard, the flaps depicted in figures 8-10 of the '719 patent are not visible at any time during the normal use of the product. Rather than support API's position, then, I conclude that the analysis in Contessa confirms my initial analysis.

Order Denying Motion for Judgment on the Pleadings at 6-7, available here (emphasis added).  Judge Robinson's August decision left little doubt that the internal flaps of the design patent at issue had been construed as immaterial to the question of infringement, as a matter of law.   While some questioned the correctness of that decision (see comment section of our original post), it became the law of the case back in August.

As a reminder, below are the figures from the design patent-in-suit and the accused box:

Poly-America was no doubt surprised, therefore, when Judge Robinson granted summary judgement of no-infringement to API last Tuesday, citing the differences in this same exact feature of the accused product. Only three months after holding that the internal flaps of the cardboard box were irrelevant to the infringement question, Judge Robinson held on summary judgment that the differences in this aspect of the box, alone, precluded a finding of infringement. Essentially, the Court held that it had overlooked recycling as part of the normal, intended use of the product:

In this regard, API presented expert testimony that, regardless of what an ordinary observer would see at the time of purchase, an ordinary observer would view the even top flaps, tabs and slots of the patented design "upon opening the box from the top or flattening it for recycling." ... Although Poly questioned the frequency with which an ordinary observer would view these features, it was unable to point to any evidence that would contradict APl's contention that the flaps, tabs and slots are visible at the point of disassembly, or that recycling was part of a box's "normal use." ... Because Poly failed to identify a genuine issue of material fact with respect to the "normal use" of the box at issue, the court considers the flaps, tabs and slots as part of the overall design for purposes of its infringement analysis.

Order Granting Summary Judgment at 15, available here (emphasis added). 

While Judge Robinson's reversal may seem unfair to Poly America, it is probably the correct conclusion in this case.  API's arguments at the pleadings stage appears to have focused on the visible aspects of the accused design during the manufacturing process, not the normal, intended use of the ultimate consumer.  Had API made its "recycling" argument a bit sooner, API may have been able to resolve this case back in August based on the same argument.  

Poly America is a reminder that it is important for design patent litigants to take a broad view of the normal, intended uses for a given article.  The normal, intended use of a product may encompass any aspect of the products' everyday use, including recycling, washing, drying, wearing, cleaning, opening, closing, or any other customary situation for the product during its life.  Issues of infringement and validity can only be properly decided with a broad perspective on how the design will be encountered in the "real world," and not just within the figures of a design patent.  

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.

Design Patent Roundup – Week Ending January 18, 2013

This was a slow week for new design patent cases, which may signal a slow-down in new complaints.  We will see in the coming weeks whether this trend continues or whether it is an anomaly of the holiday season.  Also, we have added a polling feature this week so please share your opinion on infringement vs. noninfringement!

Design Patent Links – January 14, 2013

Christopher Carani of McAndrews, Held & Malloy wrote an excellent analysis of Apple’s smartphone litigation with Samsung and several other design patent cases in an effort to discern some overall guidelines for assessing design patent infringement under the ordinary observer test.  Mr. Carani’s article was re-posted by permission on Patently-O.

Speaking of Apple v. Samsung, the German version of their ongoing design patent war will be delayed after some fancy footwork by Samsung in the EU Trademark Office in Alicante, Spain, as reported by Bloomberg.

Stephen L. Peterson of Finnegan, Henderson, recently penned an article on Lexology.com discussing several myths about design patent, including the misguided theory that “Design patents can’t protect fashion.”

IP360 recently posted an article discussing the “Benefits of US Implementation of the Hague Agreement” and the effect on international design patent prosecution. (account required).   Several other commentators recently discussed the ratification of the Hague Agreement as well, including JDSupra , Tom’s Hardware, and Bloomberg Businessweek.

Foss Patents is reporting on an anonymous ex parte reexamination of Apple’s design patent covering a page turning animation.  Apple’s page turning design patents were subject to widespread criticism when they first issued in light of traditional books and the breadth of the patents.  We will monitor this reexamination and update as warranted.

For those who live in the Boston area, the Boston Patent Law Association will be hosting a roundtable lunch seminar on “The Design Patent/Copyright Conundrum” on January 24, 2013 at Bingham McCutchen.  The roundtable will include discussion of the nature and scope of protection afforded by design patents and copyrights, the overlap in protection between the two, standards for infringement, and remedies available for infringement of design patents and copyrights. 

The Point of Novelty Test – An Offence Now Punishable By Death

It appears as though Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC is the design patent case that keeps on giving.  We previously posted about Judge Antoon’s finding no infringement in this case, and Malibu Boats’ creative use of prosecution history estoppel.  On January 4, another interesting decision came down in Pacific Coast, this time relating to the exclusion of an expert witness who somehow applied a design patent standard that has been dead-letter law for more than four years. 

Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC – Prosecution History Estoppel in Design Patent Cases

As 2012 draws to a close, the Middle District of Florida has released a late Christmas present in the form of a new argument for litigants defending claims of design patent infringement.  On December 27, 2012, Judge John Antoon II issued his decision on motion for partial summary judgment of noninfringement in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, No. 6:12-cv-33, 2012 WL 6721060 (M.D. Fla. December 27, 2012).  In his decision, which appears to be a case of first impression, Judge Antoon applied prosecution history estoppel to limit the claims of Pacific Coast's design patent to its literal scope and concluded that Pacific Coast was estopped from claiming that Malibu’s accused product infringed the patent-in-suit.

In this case, Pacific Coast accused Malibu Boats of infringing U.S. Design Patent No. 555,070 for a “Marine Windshield.”  A figure from the ‘070 Patent appears below alongside an image of the accused Malibu product:

                        

The ‘070 Patent and the Malibu windshield are arguably similar except for the vents that appear on the corners of the windshields.  The ‘070 Patent has four circular vents whereas the Malibu windshield has three rectangular vents.  Although some might argue that this difference, alone, should be sufficient to distinguish the design under the ordinary observer test, courts have noted that the ordinary observer test subsumes a doctrine of equivalents analysis.  See, e.g. Lee v. Dayton–Hudson Corp., 838 F.2d 1186, 1189–90 (Fed.Cir.1988); Minka Lighting, Inc. v. Craftmade Int'l, Inc., 93 Fed. Appx. 214, 217 (Fed. Cir. 2004).  Therefore, Malibu went one step further, arguing that Pacific Coast should be estopped from claiming infringement under the doctrine of equivalents.  

During prosecution of the ‘070 Patent, Pacific Coast had initially submitted twelve different versions of the underlying windshield design.  One of the initial embodiments claimed a marine windshield with a hatch and two oval or rectangular holes:

However, the PTO issued a restriction requirement to select which one of the five groups of designs Pacific Coast wished to prosecute.  The Examiner also noted that if Pacific Coast wished to contest the election requirement, it would need to show that the design groups in question were not distinct.  In response, Pacific Coast amended the application to delete the figures for the the non-elected designs and proceeded on the merits with respect to the figures that resulted in the ‘070 Patent.  Notably, Pacific Coast never prosecuted divisional applications based on the other embodiments, allowing them to be abandoned.  

Before the district court, Malibu argued that Pacific Coast’s election gave rise to prosecution history estoppel with regard to any windshields with less than four vent holes.  Malibu argued that under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Pacific Coast’s amendment and election constituted a narrowing amendment made for the purpose of patentability and that Pacific Coast had thereby relinquished any equivalent designs that incorporated fewer than four vent holes.  See 535 U.S. 722, 737 (2002) (“A patentee who narrows a claim as a condition for obtaining a patent disavows his claim to the broader subject matter.”).

Judge Antoon agreed with Malibu that Pacific Coast’s limiting amendment estopped their infringement contentions against Malibu.  Pacific Coast attempted to argue that the restriction requirement was merely administrative, and thus did not give rise to prosecution history estoppel, citing cases regarding restriction requirements in utility cases.  However, the Court found that restriction requirements in design cases were distinguishable because, although restriction requirements are discretionary in utility cases, they are mandatory in design cases where applications may not contain more than one inventive concept.  (citing  MPEP §§ 1504.05, 1502.01(D)).  

Finally, the Court concluded that Pacific Coast had failed to overcome the presumption in favor of a disclaimer of equivalents.  Pacific Coast attempted to argue that its limiting amendment had deleted figures with two vent holes, not three, as found in the accused product and that windshields with three vent holes was not within the scope relinquished by Pacific Coast’s amendment.  The Court dismissed this argument without clearly addressing it, stating only that “the accused design is still clearly within ‘the territory between the original claim and the amended claim.’”  2012 WL 6721060, at * 4 (quoting Festo, 535 U.S. at 740).

In any event, Pacific Coast is likely to be an important case for both patentee’s and defendants. Design patent applicants who fail to pursue alternative embodiments after an election requirement will now do so at their own peril. Failure to follow-up with a timely divisional application runs the risk of dedicating unclaimed embodiments to the public. Likewise, design patent defendants should be mindful of election requirements made on the patents-in-suit during prosecution. Any similarities between the accused product and any non-elected embodiments should be exploited.

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.

Design Patent Roundup – Week Ending Dec. 7, 2012

There was moderate activity since our last roundup, with six new cases filed this week.  We will continue to monitor the dockets for these cases and provide any noteworthy updates.  Please take a look at the designs and products at issue after the jump and let us know what you think in the comments section.  

Solar Sun Rings, Inc. v. Polygroup, Ltd., et. al, No.  5:12-cv-02099 (C.D. Ca. Nov. 28, 2012).

Plaintiff Solar Sun Rings filed suit against Polygroup, alleging infringement of Solar’s U.S. Design Patent No. 579,570 for a “Floating Spa Cover.”  If Solar’s spa cover design looks familiar to you, that is because we previously posted about Solar’s case against Wal-Mart.  Polygroup allegedly manufactures the “Solar Pad” that stands accused in the case against Wal-Mart.  It is unclear why Solar chose to bring this case as a separate action. Compare the ‘570 Patent to the accused product, below:

The case has been assigned to Judge Gary A. Feess.  Solar is represented by the Law Offices of Sepehr Daghighian.  Polygroup has not yet entered an appearance. 

Design Ideas, Ltd. v. Bed, Bath & Beyond, Inc. et al, No. 3:12-cv-03327 (C.D. Ill. Nov. 30, 2012).

Design Ideas filed suit against Bed, Bath & Beyond, alleging infringement of Design Ideas’ U.S. Design Patent Nos. 436,239 for a “Mesh Cart;” 479,272 for a “Mesh Basket;” and 517,769 for a “Portion of a Rolling Cart.”  Design Ideas accuses Bed, Bath & Beyond’s “Slim Bath Storage Cart.”  Compare the ‘239 Patent to the accused product, below:

The case has been assigned to Judge Sue E. Myerscough.  Design Ideas is represented by the Saidman DesignLaw Group.  Bed, Bath & Beyond has not yet entered an appearance. 

R&J Manufacturing, Inc. v. B&G International, Inc., No. 1:12-cv-00874 (D. R.I. Nov. 30, 2012).

R&J filed suit against B&G, alleging infringement of two utility patents and R&J’s U.S. Design Patent No. 543,590 for a “Rotating Ati-Theft Tag.”  R&J accuses B&G’s “Swivel Tag.”  Compare the ‘590 Patent to the accused product as it appears in the complaint, below:

The case has been assigned to Judge Mary M. Lisi.  R&J is represented by t Jodi-Ann McLane.  B&G has not yet entered an appearance. 

Metric Products, Inc. v. C and A Marketing, Inc. et al, No. 2:12-cv-10201 (C.D. Ca. Nov. 29, 2012)
Metric Products, Inc. v. Mogo Products, LLC, No. 2:12-cv-10204 (C.D. Ca. Nov. 28, 2012)

Metric filed lawsuits against C and A, and Mogo Products, both alleging infringement of one utility patent and Metric’s U.S. Design Patent No. 478,342 for an “Eye Shade.”  Although a specific product was not identified in the complaints, compare the ‘432 Patent to a sleep mask offered by Mogo on the internet, below:

 

The case has been assigned to Judge Christina A. Snyder.  Metric is represented by Blakely Sokolof Taylor and Zafman.  Neither Mogo nor C and A has yet entered an appearance. 

Ashley Furniture Industries, Inc. v. Cosmos Furniture, Ltd., No. 1:12-cv-09654 (N.D. Ill. Dec. 4. 30, 2012).

Ashley filed suit against Cosmos, alleging infringement of thirteen of Ashley’s U.S. Design Patents for ornate bedroom sets.  Ashley does not identify the accused product in its complaint, but alleges that “After a reasonable opportunity for further investigation or discovery, it is likely that the evidence will show that Defendant has infringed and continues to infringe.”  It is unclear whether Ashley’s allegations are sufficient to state a claim of design patent infringement.  Below is an example of one of the designs that Ashley is asserting, U.S. Design Patent No. 518,660:

The case has not yet been assigned.  Ashley is represented by McAndrews Held & Malloy.  Cosmos has not yet entered an appearance. 

Laughing Rabbit, Inc. v. Stone, No. 2:12-cv-02108 (W.D. Wa. Dec. 4, 2012)

Laughing Rabbit filed suit against Stone, alleging infringement of Laughing Rabbit’s U.S. Design Patent No. 375,372 for a “Pocket Flashlight.”  Laughing Rabbit accuses a “Dots Microlight,” allegedly sold by Mr. Stone.  Notably, the ‘372 Patent issued on Nov. 5, 1996, and should have expired on Nov. 5, 2010.  Compare the ‘372 Patent to the “Dots Microlight,” as it appears on the internet:

 The case has not yet been assigned.  Laughing Rabbit is represented by Lowe Graham Jones.  Stone has not yet entered an appearance.

Patent Law Treaties Implementation Act of 2012- Design Patent Protection Extended to 15 Years

The S. 3486 Bill, titled the “Patent Law Treaties Implementation Act of 2012,” which would implement the provisions of the Hague Agreement and the Patent Law Treaty, has passed the House by voice vote earlier today.  The Hague Agreement aims to streamline procedures for obtaining design patent protection in member countries.  A summary and a copy of the Bill are available here.

The Hague Agreement allows an individual to apply for Industrial Design protection in all countries participating in the Agreement using a single application.  Similar to utility applications, applications for design protection will be reviewed by the World Intellectual Property Organization (WIPO).  The bill also adds a new chapter to 35 U.S.C. on “international design applications,” specifying the regulations for filing the industrial design applications and determining priority dates based on foreign filing.  One of most noteworthy provisions is the change to the term of a design patent from 14 to 15 years from the date of grant. 

The Bill has been a long time in the making: the Hague agreement was signed over 12 years ago, and the Bill was ratified by the U.S. Senate in 2007.  The Bill now moves on to the White House for signature.  If signed, the provisions of the Bill shall take effect 1 year after the date of the enactment.  As always, we will continue to monitor and provide any meaningful updates.

Federal Circuit Alert – Revision Military, Inc. v. Balboa Mfg. Co. No. 2011-1628

The Federal Circuit released its decision in the design patent case of Revision Military, Inc. v. Balboa Mfg. Co. today, and the decision provides interesting insight into the Federal Circuit’s current mood regarding design patents.  

Revision Military is an appeal from a decision of the District of Vermont’s decision denying the plaintiff’s request for a preliminary injunction in a design patent case.  In this case, Revision alleges that Balboa’s new “Bravo” design protective goggles were copied from Revision’s “Bullet Ant” goggles which is covered by U.S. Design Patents No. 537,098 and No. 620,039 (the ’039 patent):

The Federal Circuit’s decision focuses primarily on the standard for a preliminary injunction in patent cases, generally, and is not unique to design patent law.  The primary holding of the case was that the District of Vermont incorrectly applied the Second Circuit’s heightened standard of “clear” or “substantial” likelihood of success on the merits.  The court explained that a preliminary injunction enjoining patent infringement pursuant to 35 U.S.C. §283 “involves substantive matters unique to patent law and, therefore, is governed by the law of this court.” (citation omitted).  Therefore, the case was remanded to the District of Vermont to apply the Federal Circuit’s “more likely than not” standard.

However, the Federal Circuit also took the opportunity to provide some noteworthy dicta on the subject of design patent infringement.  The court noted that “[a]lthough the district court stated the correct ‘overall design’ standard [for infringement], the court focused on features that ‘stand out as dissimilar,’ reciting the shape and sizes of the lenses, the concavity of the nose bridge, and the venting along the top and bottoms.”  The Federal Circuit stopped short of saying that the district court’s infringement analysis was in error though.  However, the court warned that “[a]lthough individual features may indeed serve in assessing the ‘impact on the overall appearance,’ … in determining whether apparently minor differences between specific features would be recognized as distinguishing the designs, it is often helpful to refer to any prior art with which the ordinary observer would reasonably be familiar.”  The Federal Circuit then remanded the case to the district court with a friendly suggestion to perhaps consider the prior art.  

Although the district court’s likelihood of infringement analysis was not central to the appeal, the Federal Circuit took this opportunity to remind district courts (and perhaps design patent practitioners) of the importance of context when determining design patent infringement.  Normally, substantial similarity should not be determined in a vacuum, and relevant prior art can inform the trier of fact as to the relative breadth of design patent claims.  Furthermore, consideration of prior art does not necessarily mean a narrower scope of protection.  Where a design is clearly unique within its field, it may be entitled to broader protection.  Thus, Revision Military may signal the Federal Circuit’s intention to create a more rigid framework for design patent infringement analysis, including consideration of prior art. 

We will continue to monitor this case and provide any meaningful updates.  A full copy of the Federal Circuit's decision can be found here.