Design Patent Remedies - Nordock v. Systems, Inc. (Fed. Cir. 2015)

Recently, the Federal Circuit addressed the dichotomy between standard patent damages under  35 U.S.C. 284 and design patent specific remedies under 35 U.S.C. 289. In Nordock v. Systems Inc., No. 14-1762 (Fed. Cir. Sept. 29, 2015), the Federal Circuit articulated, "[i]n the case of design patent infringement, a patentee can recover damages under 284 or under 35 U.S.C. 289 . . . ", but not both. (Emphasis added). While prior to Nordock this was already understood to be the correct law, we now have a case that confirms that a design patent holder may elect to receive an award under section 284, or section 289, whichever is larger. For the particulars of Nordock v. Systems follow the jump.

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Who is a Design Patent Inventor, and Who is Merely Assisting

Under U.S. patent law, a design patent must identify the true inventor of the subject design.  However, it is not always abundantly clear who should be named as an inventor, and who is merely assisting an inventor.  Design patents may be obtained by [w]hoever invents any new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171 (1994).  While inventorship is a question of law, it is based on underlying facts.  When determining inventorship, it is imperative to ask: which individual or individuals “conceived” of the claimed invention?  That is, who conceived the arrangement of elements of the ornamental subject matter represented in the figures of the design patent.  Safco Products Co. v. Welcom Products, Inc., 799 F. Supp. 2d 967 (2011).  As there are often many people working to bring the subject matter of a design patent to fruition, this determination is not always so simple.  Read on to learn how to identify an inventor, and those merely assisting.

In Hunter's Edge v. Primos, The Ordinary Observer is Clearly No Turkey...

Perhaps we should have waited until Thanksgiving to share this case, but some things just can't wait. On Tuesday, Judge Myron Thompson of the Middle District of Alabama granted Primos' motion for summary judgment of no infringement in the case of Hunter's Edge v. Primos.  The case represents strong precedent that two-dimensional design patents cannot be infringed by three-dimensional articles of manufacture.  However, the case may be just as interesting for the issues that were left undecided, such as whether Hunter's Edge's design patent represents an unpatentable "design of nature."  You be the judge, after the jump.  

High Point Designs Part II - "Overall Appearance" Does Not Mean "Abstract Design Concept"

In round two of High Point Design v. Buyer's Direct, (i.e. the fuzzy slipper case), the Federal Circuit held that a design patent for the ornamental appearance of a fuzzy slipper held by Buyer’s Direct, Inc. (“BDI”) was not anticipated by an alleged prior art slipper.  On the other hand, the Federal Circuit also held that meaningful differences in the overall visual effect of the design patent and an alleged infringing product supported a summary judgment determination of non-infringement.  See High Point Design LLC v. Buyer’s Direct, Inc., No. 14-1464 (Fed. Cir. July 30, 2015).

Alternative Designs -- An Indicator of Ornamentality

Last week, a district court judge construed an exhaust manifold claim as covering the overall ornamental appearance of the manifold in U.S. Design Patent No. D636,316 (the "'316 Patent).  Group-A Autosports, Inc. v. DNA Motor Inc., EDCV 14-01834-JGB (C.D. Cal. 2015). 

Direct Infringement - "Sold" or "Offered to Sell"

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In an interesting decision from the Western District of Washington last week, Judge Ricardo S. Martinez granted an order denying Amazon's Motion for Summary Judgement that it did not directly infringe Milo & Gabby's animal-shaped pillow case design patents in Milo & Gabby, LLC et al v. Amazon.com, Inc., No. C13-1932RSM (W.D. Wash. 2014). The Court agreed with Plaintiff Milo & Gabby that questions of fact preclude summary judgment as to whether Amazon "offered to sell" allegedly infringing merchandise actually sold by third-party vendors, but listed on the Amazon.com website. 

Is Design Patent Functionality a Proper Jury Question?

Last week, Judge Sheri Polster Chappell of the Middle District of Florida entered an interesting order regarding design patent functionality in Chico's FAS, Inc. v. Wink Intimates et al., No. 2-13-cv-00792  (M.D. Fla.).  In this case, Chico’s sued Wink for declaratory judgment of design patent invalidity and Wink counter-sued Chico’s, claiming infringement of U.S. Patent No. 622,478 which relates to a design for a camisole.  Chico's argument for functionalty (and Judge Chappell's decision) demonstrate some common misconceptions about design patent functionality.  Continue reading after the jump to see what Judge Chappell got right and also what she got wrong...