Design Patent Remedies - It's Never Too Late to Change Your Mind

One of the trickiest questions for any plaintiff in a design patent case is which remedy to pursue. Unlike a utility patent, where only the plaintiff's damages are available under 35 U.S.C. § 284, a design patentee may instead elect to pursue the defendant's ill-gotten profits under 35 U.S.C. § 289. This special remedy for design patent infringement is what makes the oft-overlooked design patent such a powerful form of intellectual property. 

However, deciding which remedy to pursue is never simple. On the one hand, pursuing the plaintiff's damages allows the plaintiff to potentially treble its award in exceptional cases. On the other hand, by seeking to disgorge the defendant's profits, a plaintiff can streamline damages discovery, simplify the issues that are presented to the jury, and avoid additional litigation costs. Depending on the nature of the infringement and the profit margin for the accused product, either theory of recovery could yield a larger sum for the plaintiff. Thus, the decision to pursue damages or profits is rarely simple choice. 

Luckily, a plaintiff's decision to seek damages or profits is not set in stone. Recently, Judge Rudolph Randa held that Nordock was entitled to take discovery of Systems' profits despite never having requested the defendant's profits from infringement in its prayer for relief. See Nordock, Inc. v. Systems, Inc., No. 11–C–118, 2012 WL 4760784 (E.D. Wis. October 5, 2012). In Nordock, Systems, Inc. is accused of infringing U.S. Des. Pat. No. 579,754, for a lip and lug hinge plate for dock levelers. In its complaint, Nordock only requested damages for infringement under § 284. Nordock also failed to identify Systems' profits as a measure of damages in its initial disclosures. Systems Inc. therefore refused to produce any evidence of its profits. Systems Inc. argued that the requested information was irrelevant to Nordock's claims and the only articulated theory of damages. 

Ruling on Nordock's motion to compel, Judge Randa held that evidence of Systems, Inc.'s profits were discoverable, even without first amending the complaint. Judge Randa reasoned that, under Rule 54(c), courts "should grant the relief to which each party is entitled, even if the party has not demanded that relief in its pleadings," unless such relief would prejudice the opposing party. Finding no prejudice to Systems, Inc., the court ordered that the records be produced and allowed Nordock's new theory of disgorged profits. 

The lesson from Nordock is simple. As a general rule, plaintiffs in design patent cases should request all available forms of relief, including disgorgement of profits under 35 U.S.C. § 289. However, a plaintiff may still be able discover evidence of the defendant's ill-gotten profits and assert a disgorgement theory if it acts quickly to gather the necessary evidence before trial.

Design Litigation Beyond Apple/Samsung

Design patents are not just for Apple anymore. Yoga-apparel maker Lululemon Athletica Inc. has asserted its design patents covering the "Astro" yoga pant against Calvin Klein Inc. and its manufactuer in a complaint filed last month in Delaware District Court. 

Lululemon has asserted three design patents in this action, including D645,644, which covers a yoga pant with waistband that includes overlapping panels of fabric, D661,872, which covers the waistband of the pant, and D662,281 which covers a “Capri” style pant with the same waistband.  In addition to the asserted design patents, Lululemon has applied for over 14 design patents on its products, including jackets, shorts and tank tops.   Exemplary figures from the design patents are shown below.

Some experts predict that this suit “could provide new ammunition for the [fashion] industry to wield against copycats.”

By Julia Mathis

Hearing on the PARTS Act

The Subcommittee on Intellectual Property, Competition and the Internet held a hearing yesterday to discuss the Promoting Automotive Repair, Trade, and Sales Act" (the "PARTS Act").  As discussed here the act could significantly reduce the term for design patent protection for repair parts from 14 years to 30 months.

The results in the committee were mixed.  One of the primary concerns was auto-manufacturer's ability to completely monopolize the autoparts marketplace with design protection.  However, the proposed remedy to limit the term of design patents for auto-parts struck members of the committee as equally unfair.

According to Rep. Maxine Waters, D-Calif., "whether you're a small company or big company or an individual, if you're smart enough and inventive enough to come up with something you can patent, I want you to enjoy the benefit of it."   "I don't like the idea of investing in a patent and all of a sudden it's not yours anymore after a short time. That doesn't seem right to me." (1) 

The committee members appeared to struggle with balancing competition against the rights afforded to inventors.  How the committee will resolve this balance will require close attention.    

(1) (quote attributed by Ryan Davis, in "Lawmakers Wary Of Bill To Limit Car Part Design Patents," link)

FOREIGN VIABILITY FOR UTILITY PATENTS ON USER INTERFACE FEATURES

Recent decisions in EU have confirmed that user interface features meet the patentability requirements of the EPO, ruling Apple’s slide to unlock user interface solves a technical problem using a technical feature that has a technical effect.  

Apple has succeeded in the German courts, enforcing a patent for a user interface feature for its mobile devices. The ruling demonstrates the value of European patents for "software" inventions where a "technical" effect can be demonstrated. The claims in the granted patents and the problems that they solve provide insight about what features of a user interface might be regarded as "technical" by the EPO. The advantages to a software developer of being able to patent innovative interface features that are important to the "look and feel" of the device and the software running on it are self-evident.  (Full article – here)

Where the technical effect or technical nature of the feature of your user interface is a more difficult question, design patents may provide some protection.  Design patents can also support a protection strategy that involves both utility and design filings.  Involving both utility and design filings can help insure a minimum level of protection especially where it is difficult to make out an argument for a specific technical feature having a technical effect. 

Using Design Patents as Prior Art Against Utility Patent Applications

Despite the fact that design patents and utility patents coexist largely under the same body of laws, our tendency is sometimes to discuss design patents and utility patents as being two different, albeit related, things. Indeed, as we know, design patents only protect the ornamental aspects of an invention, while, for example, a utility patent can protect the structure of the invention. As we go about our business, we might think that these two types of patents live separate lives, ne’er to cross paths with one another due to the complementary nature of their coexistence.

Yet lurking deep within the magnum opus otherwise known as the Manual of Patent Examining Procedure (MPEP) are several interesting sections that discuss one uncommon intersection between design and utility patents – the ability of a design patent to anticipate the claims of a utility patent application. To wit: “Drawings and pictures can anticipate claims if they clearly show the structure which is claimed.” MPEP 2125. This is to say, if a drawing in a design patent reasonably discloses a claimed structural feature, the drawing can be used by a patent examiner to reject a claim in a utility application! To qualify as prior art, the drawings in a design patent must constitute an enabling disclosure. “[A]n enabling picture may be used to reject claims to the article. However, the picture must show all the claimed structural features and how they are put together.” MPEP 2121.04.

Although the Board of Patent Appeals and Interferences rarely issues opinions relating to design patents, a recent decision discussed an examiner’s §103(a) obviousness rejection of a claim in a utility application based in part on a design patent that illustrated a device similar to the one being claimed. What saves the applicants (at least for the time being) is their argument that the drawings in the design patent do not sufficiently disclose the structure or the function of the claimed element (an inwardly extending flange). In this instance, the BPAI agreed.



Which brings us to a caveat: since patent drawings are not necessarily drawn to scale, those drawings cannot be used as evidence of the size or proportion of the features they disclose unless explicitly described. This is notable particularly because design patents typically do not speak to the dimensions or functional characteristics of the claimed design, and therefore examiners face a challenge in using those drawings as a basis of rejecting the structural or functional limitations of a utility application claim.

Thus there is an interesting interplay between design and utility patents that arises (although rarely) during the prosecution of utility patents which does not usually come to mind. Nevertheless, it does make sense that the pictures in a design patent could be used as prior art against a utility application, since prior art can be just about anything disclosed to the public – including design patents.

Limiting Term for Auto Part Designs

Legislation has been proposed this month that could severely limit design patent protection for automotive repair parts. Darrell Issa (R-Calif.) and Zoe Lofgren (D-Calif.) reintroduced legislation on February 2 that could drastically reduce the term for design patent protection for repair parts from 14 years to 30 months. This is not the first time automotive parts have been targeted (as Observed here), prior legislation sought to exclude automotive repair parts from design protection entirely.

The proposal, titled the "Promoting Automotive Repair, Trade, and Sales" (PARTS - here) Act, allows for manufacture, testing, importation, and pre-sale distribution of repair parts for any automotive "component parts" that would otherwise infringe a design patent. The PARTS bill exempts acts of infringement that occur 30 months after a patented part is offered for sale.

The bill has the potential to severely limit the protection afforded to patentees of automotive parts. Under such a scheme, timely filing of a design patent application is essential to maximizing the 30 month period. We will continue to follow the legislation and report on it status.

Interesting Designs

Given the recent passing of Steven Jobs, I selected one old and one new design on which he was listed as an inventor.



Many thanks to Patently-O for reminding me of the contribution Steven Jobs made as a technology and an Intellectual Property innovator.