Interesting Designs

A sports edition of interesting designs is way over due.

First up, keeping track of game time was never more fashionable than with this stadium watch design.

Next up, keep good traction on your favorite potent potable with this NASCAR inspired beverage sleeve.

No, the next design is not an exploding football helmet. It is, in fact, a cup.

And finally, for those of us who golf in areas where auto theft is a problem, we have a new version of THE CLUB for golf lovers...

Amici Curiea or Amici Intentio Paternus? Apple and the AIPLA weigh in on Stanley

Two of the loudest voices in the cacophony of criticism that greeted the decision in Richardson v. Stanley (analyzed here) are the American Intellectual Property Law Association (AIPLA) and Apple, Inc. Both filed amicus briefs in support of the petition for rehearing of the case en banc in front of the CAFC. Each brief provides ample justification to grant the petition.

Both amici train their initial arguments on the notion that design patents protect the claimed overall appearance of an article of manufacture, regardless of which elements are functional and which are not. For example, Apple succinctly fashions a rule from weighty precedent (including Bonito Boats) that removes direct consideration of the functionality of individual elements from both infringement and validity analysis. The AIPLA, on the other hand, backs into the notion that design patents protect the overall appearance of a design by citing other, less weighty precedent, while calling attention to the tension raised between Egyptian Goddess (analyzed here) and the panel decision in this case.

However, Apple and the AIPLA take different approaches to further augment their positions. Apple devotes the bulk of its analysis to an assault on what it terms a false “ornamental/functional” dichotomy. In essence, Apple attempts to establish that functional features are also ornamental because the functional features contribute to the overall appearance of an article. Apple also asserts that functional features have been considered to also be ornamental by the CAFC in previous cases, such as Elmer v. ICC Fabricating, Inc. Therefore, Apple argues, they should not be excluded from protection during claim construction.

The AIPLA takes a more conventional approach first by asserting that the panel decision in this case ignores CAFC precedent (such as Elmer) and second by arguing that the panel decision in this case is simply bad policy. In particular, the AIPLA argues that factoring out functional elements during claim construction unwisely weakens design patent validity and enforceability by effectively vitiating the presumption of validity and by reducing the basis of enforcement to only a subset of the elements claimed.

The amici also differ in the part that functionality should play in design patent jurisprudence. Apple espouses the use of functionality to challenge the validity of design patents and proposes a rule that a design patent is valid unless “there are no alternative designs that perform substantially the same general function as the overall claimed design.” The AIPLA solution, in contrast, would allow the fact-finder to “identify and discount the functional nature and purpose of elements when comparing the patented and accused designs.”

Filtering functionality out of the basis for enforcement is certainly not new to intellectual property law (see, e.g. the Abstraction-Filtration-Comparison test used to find substantial similarity of software under copyright law). But, as well articulated in the briefs discussed above, such an approach is awkward to apply when dealing with designs of articles that inherently embody functional characteristics. Hopefully, the CAFC will take the opportunity presented by this petition to provide precise and coherent guidance as to the role functionality should play within design patent law. The CAFC has yet to address the petition for rehearing of the panel decision en banc.

Today's theme -- identify the patentable design feature of the following designs (if you can).

Solid Loop Lifter for Concrete Structure

Auto Clutch Engine

Multiple Function Shank for a Nut Driver

Mounting Bracket

Since its adoption in 2003, very little has been written in the United States about Community Designs. As an active practitioner who files several design patent applications in the United States and in select foreign countries each year, I often wonder why this valuable tool has not been utilized more by my clients. My experience from my clients is that they are more concerned with protecting their designs in Asia, and in China in particular, and view Europe as somewhat of an afterthought. However, with the advent of Community Designs protection in Europe appears to have become more attractive.

As with rights conferred by a design patent, a Community Design protects the appearance of the product in question. The product can be any type of item, including packaging, graphic symbols and typographic typefaces. One significant benefit of Community Designs is that Community Designs are enforceable in each Member State. As of the date of this entry, there are 27 Member States. A registered Community Design can be extended up to a maximum of 25 years from the filing date provided that it is renewed by the owner. A Community Design must be published within 30 months of its filing date.

The Office for Harmonization in the Internal Market touts the following advantages of registered Community Designs as compared with national protection schemes provided in Europe:

- a single legal system provides a strong and uniform protection throughout the European Union;
- a single application rather than several applications in select countries;
- a single language of filing;
- a single administrative center rather than dealing with several patent offices;
- a single file to be managed;
- a single payment;
- the possibility to file multiple applications (i.e. to include several designs in one application, such as a whole range of similar products);
- the possibility to keep the design undisclosed for up to 30 months to avoid competitors learning of it; and
- an exclusive right to use the design and to prevent any third party not having consent from using it.

What are your experiences with Community Designs? Have you found them to be an efficiently procured and effective means of protection for your clients?

Designs of the Week
From the Official Gazette for the week of April 27, 2010:


D614,377 - MUSICAL MATERNITY BELT



D614,398 – CHILD’S BACKPACK




D614,434 - GAS GRILL




D614,504 - BOTTLE

Where It Began: Egyptian Goddess Slays Point of Novelty

The recent fervor in Design Patent cases stems largely from Egyptian Goddess, Inc. v. Swisa, Inc. (2008), in which the CAFC eliminated the “point of novelty” test long used by courts. Formerly, the "point of novelty" test existed as a "second and free-standing requirement for design patent infringement." The CAFC on review found this test inconsistent with the Supreme Court's decision in Gorham v. White (1871).

In Gorham, the Supreme Court made clear that “sameness of effect upon the eye, is the main test of substantial identity of design.” It then enunciated what has become known as the ordinary observer test:

“[I]f, in the eye of an ordinary observer, given such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.”

The CAFC attempted to reconcile existing precedent that applied a separate “point of novelty” test, characterizing it as a “version” of the ordinary observer test espoused. It noted, however, that those cases “are more properly read as applying a version of the ordinary observer test in which the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art.” The analysis now collapses into one test to determine if a design as a whole is substantially similar, taking into account the context of the prior art.

Egyptian Goddess also addressed whether trial courts should conduct claim construction in design patent cases. The CAFC cautioned that the trial court should "recognize the risks entailed" in detailed verbal description of the claimed design, "such as the risk of placing undue emphasis on particular features." Further, courts should not require "a detailed verbal description of the claim, as would typically be true in the case of utility patents." Concluding that although courts "have a duty to conduct claim construction in design patent cases," there is no required format, and indeed the drawing itself may be the best source of describing what is claimed.

Egyptian Goddess dealt only with infringement, but International Seaway (analyzed here) expanded the ordinary observer test to validity, as well. Recent cases have highlighted the difficulty in applying the ordinary observer test, as courts have struggled to clarify how an ordinary observer views the differences between a patented design and the accused product. In Crocs v. ITC, (analyzed here) the CAFC reiterated its caution against overly-detailed claim construction. In Richardson v. Stanley Works, (analyzed here) the court provided guidance on the ordinary observer’s view of functional elements in a design. The nuances of the ordinary observer test will likely provide fertile ground for subsequent decisions for some time to come.

Designs of the Week

From the Official Gazette for the week of April 20, 2010: