Design Patent Roundup – Week ending Nov. 2, 2012

A couple of new design cases were filed last week. As always, we will continue to monitor the dockets for these cases and provide any noteworthy updates.

Emerson Electric Co. v. Sourceone Plus, Inc., 1:12-cv-06252 (N.D. Ill. October 26, 2012)

Plaintiff Emerson Electric Co. filed an amended complaint against Sourceone Plus, doing business as SOP Green Klean and GK Vac Bags, alleging infringement of D601318 - Filter for a wet/dry vacuum cleaner (see below). The original complaint, only asserted a utility patent (U.S. Patent No. 8,206,482 B2, entitled “VACUUM APPLIANCE FILTER ASSEMBLIES AND ASSOCIATED VACUUM SYSTEMS”) against SourceOne. Below is a comparison of the ‘318 Patent with the accused Vacuum Filter as it appears in the complaint:  

The case has been assigned to Judge Milton I. Shadur. Emerson Electric Co is represented by Vanek, Vickers & Masini, P.C., no counsel of record for Sourceone as yet.

Umbra LLC v. Jobar International, Inc., 1:12-cv-00966-RJA (W.D.N.Y., October 12, 2012)

Plaintiff Umbra filed a complaint against Jobar International, Inc. alleging infringement of its Design Patent No. D657,172 and seeking injunctive relief and damages.  According to the complaint, the patent covers a “dress-shaped organizer” known and marketed as “LITTLE BLACK DRESS” , one of Umbra’s home accessories and décor products.  The allegedly infringing product is marketed and sold under the brand U.S. Patrol as the “Hanging Dress Safe.” The case has been assigned to judge Richard J. Arcara.  Umbra is represented by Damon Morey LLP and Simpson & Simpson PLLC. There is no counsel of record yet for Jobar. The ’172 patent and the accused product are shown below:

Apple's New Icon Design Patent - An Article of Manufacture?

In the midst of Apple’s ongoing patent war with Samsung, we noticed an interesting design patent that was issued last month on Apple’s familiar ITunes logo.   The patent is U.S. Design Patent No. 668,263, entitled “Display Screen or Portion Thereof with Icon”:

Others have questioned the novelty of Apples ITunes logo.  Nevertheless, Apple’s ‘263 Patent serves as a reminder of the broad subject matter for design patents.  Under the Patent Act, design patents may be awarded to “[w]hoever invents any new, original and ornamental design for an article of manufacture.”  35 U.S.C. § 171.  Historically, a “manufacture” was understood to mean “‘by the hands of man’ from raw materials, whether literally by hand or by machinery or by art.”  Application of Hruby, 373 F.2d 997, 1000 (C.C.P.A 1967) (holding that the arrangement of jets in a water fountain was patentable subject matter under § 171).  Therefore, until the mid ‘90’s, the PTO rejected design patent applications drawn to computer-generated icons (“CGIs”) as failing to meet the requirements of §171.  Specifically, the PTO consistently rejected CGI applications as failing to meet the “article of manufacture” requirement.  See, e.g. Ex Parte Donaghue, 26 U.S.P.Q.2d 1266 (Bd. Pat. App. & Int. 1992):

We find that appellant's claimed design, as disclosed in the application before us, is merely a picture. Appellant's specification does not show or describe the claimed design embodied or applied in any article of manufacture. Only pictures of the icon are shown or described. The claimed subject matter, therefore, does not meet the requirements of 35 U.S.C. § 171.

Then, in 1995, the PTO reversed itself without explanation, declaring that “[a] design for a computer-generated icon which is embodied in an article of manufacture is statutory subject matter for a design patent under Section 171.” See 60 Fed. Reg. 52,170 (Oct. 5, 1995) (promulgating interim guidelines for the review of design patent applications for computer-generated icons). 

Today, the PTO will allow a CGI design patent “if the disclosure as a whole suggests or describes the claimed subject matter as a computer generated icon embodied in a computer screen, monitor, other display panel, or portion thereof.”  M.P.E.P. §1504.01 (a).  The M.P.E.P also requires that the drawings for a CGI design must include a depiction of the icon “embodied in a computer screen, monitor, other display panel, or a portion thereof.”  M.P.E.P. §1504.01 (a)(I)(B).  Notably, the ‘263 Patent does not depict the iTunes icon embodied in a computer screen or portion thereof.

Apple has had success with CGI design patents in the past.  Apple’s Design Patent No. 604,305 (pictured below) was one of the patents that the jury found Samsung had willfully infringed back in August.  In fact there have been few, if any, other cases in which a CGI design patent was asserted. 

Samsung did not argue that CGI design patents were unpatentable subject matter under 35 U.S.C. § 171.  Presumably, this was to avoid invalidating its own CGI design patents.  Thus, this author is unaware of any court that has addressed whether the PTO’s current interpretation of 35 U.S.C § 171 is correct.  But for now at least, CGI design patents remain an important part of any software developer’sintellectual property portfolio.  As we have previously noted, software developers, should consider applying for design patent protection in addition to standard trademark protection for the novel graphics used in their programs.

Design Patent Roundup – Week ending Oct. 26, 2012

It was a busy week for design patent plaintiffs with five new cases filed since our last roundup. Take a look at the designs and accused products after the jump and let us know what you think in the comments section.  Has the ordinary observer test been satisfied?  As always, we will continue to monitor the dockets for the these cases and provide any noteworthy updates. 

Weekly Round Up of Design Patent Case filings – Week ending Oct. 20, 2012

CFM Consol., Inc. v. Specialty Auto Parts USA, Inc., No. 3:12-cv-05923 (W.D. Wa.) (Oct. 12, 2012)

Design Patent

On October 17, 2012, Flex-a-lite (part of CFM Consolidated, Inc.), maker of automotive cooling products, filed a complaint alleging infringement of its D532095 patent against Specialty Auto Parts USA, Inc. Flex-a-lite sells the Black Magic S-Blade fan that attaches to the vehicle radiator, which is supposed to lead to increased horsepower, torque and gas mileage over a traditional flat blade design.  The D532095 patent is directed to a combined fan assembly and shroud, shown on the right.  The Black Magic S-Blade fan product, made by Flex-a-lite is shown in below, and the allegedly infringing product is shown below on the right.  The case is pending in the Western District of Washington and has been assigned to Judge Ronald B. Leighton.  

The Black Magic S-Blade

Specialty Auto Parts

Aspen Med.Prods., Inc. v. Novitas Med., LLC, No. 2:12-cv-08733 (C.D. Cal.)  (Oct. 11, 2012)

On October 11, 2012, Aspen Medical Products, filed a complaint in the Central District of California, alleging infringement of its D636494 patent against Novitas Medical.  Aspen Medical Products makes and sells upper and lower spinal orthotics, and the D636494 is directed to a Lumbar belt.  According to the complaint, defendant’s  Sequoia products infringe the design covered by the D636494 design patent, shown below. We will continue to monitor the dockets for both of these cases and provide any interesting updates.

Designs Abroad – Being “Cool” Doesn’t Pay (Apple v. Samsung Continues)

In Europe, some new developments in the Apple Samsung feud have gone Samsung’s way.  On Thursday, a U.K. appeals court ruled that the Galaxy Tab 10.1 tablet (Samsung) does not infringe Apple’s design patent.

The U.K. appeals court went one step further, indicating that the decision should be binding throughout the European Union.  Interestingly, a German Court arrived at the opposite conclusion issuing a EU-wide injunction in an ex-parte procedure.  The U.K. appeals court took that decision to task indicating the German court’s reasoning was “sparse in the extreme.”*  Based on Community Design Procedure, the U.K. appeals court decision should dissolve the injunction.

The U.K. appeals Court further noted:

If the registered design has a scope as wide as Apple contends it would foreclose much of the market for tablet computers. Alterations in thickness, curvature of the sides, embellishment and so on would not escape its grasp. Legitimate competition by different designs would be stifled.*

Ultimately, the U.K. appeals court upheld the lower court’s decision of non infringement.  The lower court’s decision derived some notoriety for determining Samsung’s designs “are not as cool,” and thus, creating a different impression than Apple’s designs.  (Link, para. 190).

The war is far from over, but Samsung appears to have come away with a victory in this battle.  The ensuing forays by both Samsung and Apple will require close attention, as design protection and enforcement case law in the EU is simply not developed.  There is an opportunity, for better or worse, for Apple and Samsung to write the book on protection and enforcement of Community Designs in the EU. 

* Quote attributed by Patentlyo.com – full article available here.

Foreshadowing - The Prosecution History of the First Generation iPad Design Patent

The big news this week is the design patent granted to Apple on its first generation iPad design (U.S. Design Pat. No. D669,069). The application for this design was filed on January 26, 2010, nearly three years ago. Unlike the design patent asserted against Samsung, this design patent features aspects of the first generation iPad design that include the home button, the docking port, the volume and mute buttons.

Looking at the prosecution history, Apple received its first notice of allowance for this patent in March of 2011. So why did it take so long to get this patent granted? Because Apple filed six separate Continued Prosecution Application requests, each time submitting a new Information Disclosure Statement (IDS). Did Apple intentionally delay the patent issuing? It is possible that Apple is gearing up to assert the patent and is making sure all the references are considered by the PTO. The list of references is quite extensive and includes exhibits from the Apple v. Samsung case.

Another interesting point to note in the prosecution history is the obviousness-type double patenting rejection received during prosecution. The doctrine of obviousness-type double patenting bars applicants from obtaining a second patent on an invention that is deemed to be an obvious variation of a claimed invention. The rejection was received over the co-pending application 29/353,311 in view of US Patent No. D602,017 and D451,505. The 29/353,311 application (now patent D637,596) discloses a more generic iPad design.

D602,017 discloses an iPhone design and D451,505 is directed to a portable computer made by Hitachi. In response to the rejection, Apple amended the drawings to the version that includes the contrasting shading on the screen seen above. All of these co-pending design applications on the iPad design could result in thin patent rights in each individual application, but the combination of these applications could provide Apple with a formidable weapon against against other tablet PC manufacturers.

Design Patent Claim Construction – A Picture Is Worth 1,000 Words

Since the Federal Circuit’s 2008 decision in Egyptian Goddess, one of the most difficult issues in design patent law surrounds the question of claim construction. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc). In Egyptian Goddess, the Federal Circuit famously did away with the old “point of novelty” test, returning the ordinary observer test to its rightful place as the sole test for design patent infringement (prior analysis here). However, in a less noted portion of the Egyptian Goddess decision, the Federal Circuit opined on the issue of 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 claim language.” Id.  The court reasoned that “a design is better represented by an illustration ‘than it could be by any description and a description would probably not be intelligible without the illustration.’”  Id. (quoting Dobson v. Dorman, 118 U.S. 10, 14 (1886)). 

The Federal Circuit lists three scenarios when a design patent claim construction might be helpful to a jury: 1) describing the role of particular conventions in design patent drafting, such as the role of broken lines; 2) assessing and describing the effect of any representations made in the course of the prosecution history; and 3) distinguishing between those features of the claimed design that are ornamental and those that are purely functional. Id. at 680 (citing OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed.Cir.1997) (“Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design”)). 

However, the majority of district courts have avoided a detailed verbal claim construction after Egyptian Goddess, opting instead to clarify design patent law through jury instructions instead.  See e.g. 180s, Inc. v. Gordini U.S.A., Inc., 699 F.Supp.2d 714 (D. Md. 2010) (construing design patent claims as “the figures included in the patent”); Dexas Int’l., Ltd. v. Office Max Inc., No. 6:07-cv-396, 2009 WL 252164, at *5 n.2 (E.D. Tex. Jan.30, 2009) (claim construction “would entail a significant risk that the jury would place undue emphasis on particular features of the claimed designs or otherwise focus on distinct features rather than on the designs as a whole”); DePaoli v. Daisy Manufacturing. Co., Inc., No. 07-cv-11778, 2009 WL 2145721, at *2 (D. Mass. July 14, 2009) (claim construction unduly risked overemphasizing specific design elements).  But see also Mag Inst., Inc. v. JS Prods., Inc., 595 F.Supp.2d 1102, 1108 (C.D. Cal. 2008) ("the Court, in the usual course of issuing a claim construction order, will construe the challenged claims to ‘identify the non-functional aspects of the design as shown in the patent.’”).

Recently, the District of Colorado joined the majority of district courts rejecting detailed verbal claim construction in design patent cases. In Yao-Hung Huang v. Marklyn Group, Inc., Huang accuses Marklyn of infringing U.S. Design Pat. No. 614,780 for a flexible attachment strip for attaching LEDs to the front grill or side mirrors of an automobile. See Yao-Hung Huang v. Marklyn Group, Inc., No. 11-cv-01765, 2012 WL 4856720 (D. Colo. Oct. 11, 2012). Marklyn proposed a detailed claim construction, including dimensions and ratios for the design. However, the court determined that a detailed verbal description would not be helpful to the jury, and therefore construed the claims as “[t]he ornamental design for a flexible attachment strip having a plurality of forward facing LEDs, as shown ad described.” Id. at *2. Notably, Judge Blackburn found that a detailed construction was not required to distinguish the ’780 patent from the prior art or to limit its scope to its non-functional elements. Instead, the court reserved those questions for a later date.

Naturally, defendants in design patent cases will prefer a detailed claim construction in order to focus discovery and position the case for summary judgment. But, defendants should be cautious not to seek more verbiage than would be helpful to a jury. Instead, defendants should narrowly tailor their proposed claim constructions to target one or two perceived weaknesses in the plaintiff’s case. Otherwise, federal judges are likely to opt out of claim construction altogether and reserve issues of functionality and prior art for summary judgment.