Expanding Scope of Design Patent Protection

As noted on a recent Ordinary Observer post (here – by Michael Mathaisel), Apple recently made headlines over a patent infringement loss and the near simultaneous grant of a design patent covering, arguably, the same technology.

The design patent that just issued to Apple, D624,932 was an eye opener from my perspective. I had some experience with design patents being issued on icons within a user interface. My colleague wrote an article on this very topic (here – by Thomas McGinnis) referencing for example D608,366 directed to the appearance of a display screen.

The use of design patents for static computer icons appears to lead directly to the applicability of design patents to animated icons. (See M.P.E.P. §1504.01(a) Computer-Generated Icons, Sec. IV). The ability to protect the display of animated icons on a computer display screen suggests that any display or animation within a computer screen is also protectable. Apple appears to be an early adopter of such an approach, filing design patents at a brisk pace. (Some recently issued Apple Design Patents may be found here).

I recently filed a number of design patents on virtualizations of physical designs for display on a smart phone (in conjunction with design applications on the objects themselves). The iPhone, Android, and other smart phone devices have given rise to a plethora of virtualized objects that could be covered by design patent. An interesting article (here), touches upon the use of design patents to protect the virtualization of physical objects, for example in the electronic gaming space. The virtualization of designs in that setting amount to what the authors dub as “design theft” by incorporating known designs – a virtual Ford Mustang into Grand Theft Auto, for example. The authors touch upon filing separate design patent applications to cover both the physical object and the virtualized object as is would be displayed on a computer screen. The approach is described as a “non-traditional” method of hedging bets. The “virtual” design patent helps to deflect an argument that a design patent covering a physical object does not necessarily protect a virtualization of the same object.

Of course every situation is fact specific, but it would appear from a litigation perspective that eliminating a potential argument with the relatively inexpensive filing of a design application directed to the virtual design would have significant value. In addition, I expect there to be increasing numbers of design application filed on “changeable computer generated icons,” as smart phones adoption and adoption of similar devices increases. Further, with industry participants like Apple leading the way, I expect to see the boundaries defined by the “changeable computer icon” to be expanded into the virtualization and animation of almost any display shown on any computer system.

New Designs of the Week

Now on the National Register of Historic Places, the ubiquitous Welcome to Fabulous Las Vegas sign was never copyrighted by its creator, Betty Willis, and has been reproduced on everything from keychains to Nevada license plates to...slot machines (or whatever this is supposed to be)!

Hay, hay, get out of the way!

Time to make a connection.

I'm thinking this would be perfect for camping.

Who stole my cupcake!

Strange, but still cool.

Fun for all ages.

Mirror Worlds, LLC v. Apple, Inc. and Apple’s New Cover Flow Design Patent

What happens when a utility patent holder wins an infringement suit against a defendant who has been awarded a design patent covering the same technology? This interesting scenario has recently arisen in the case of Mirror Worlds v. Apple.
In March 2008, Apple was hit with the patent infringement suit by Mirror Worlds alleging that Apple’s Cover Flow, Time Machine and Spotlight technologies infringed several utility patents held by Mirror Worlds. The patents in suit are directed to a document stream operating system and document organizing and display facility. The earliest filing date in the patent family is June 28, 1996. According to the patents, documents are stored by an operating system in a chronological sequence with respect to other documents, based on the time that the document was presented to the operating system. The patents also disclose representing the document stream as a receding stack of overlapping document icons. A representative figure from the patents is shown below:

This brings to mind Apple’s old HyperCard application, originally released in 1987, which this author used extensively in the early 1990’s on his trusty Mac IIsi to develop lighting and video control applications for a nightclub at Walt Disney World’s Pleasure Island as well as a media event database for WDW’s 20th anniversary in 1991. HyperCard followed a Rolodex card model for designing applications on the Mac, with each card within a “virtual stack” of cards containing a set of data and some functional code. Apparently, Apple also saw the similarities, and brought these up during trial.

Nevertheless, on October 1 a federal jury in the Eastern District of Texas awarded Mirror Worlds damages of $208.5 million (per patent) for infringing three of Mirror Worlds’ patents.
Entirely by coincidence, on October 5, the United States Patent and Trademark Office granted to Apple design patent D624,932 for an “Animated graphical user interface for a display screen or portion thereof.” Many readers familiar with iTunes and iOS devices (iPhone, iPod Touch) will recognize this as Apple’s Cover Flow feature, where icons representing music albums or other recordings rotate and scroll across the screen as the user browses through them.



Apple is appealing the jury verdict. It remains to be seen what, if any, practical effect this new design patent will have on the outcome of this interesting case, and the implications to Apple’s patent rights in the face of this verdict, if it stands.

Designs of the Week

From the Official Gazette for the week of October 5, 2010:

A Trademark Justification for Design Patent Rights

Dennis Crouch, a professor at the University of Missouri Law School and the founder of the leading patent blog patentlyo.com, has posted a draft article discussing design patents. Mr. Crouch identifies recent trends involving various types of IP protection, and discusses what those trends mean for the scope of various forms of IP protection. I highly recommend reading the article (available here), particularly if you’re interested in the interplay between trade dress protection and design patents.

Mr. Crouch points out the important “gap-filling” role that design patents can play in conjunction with trade dress protection. As the Supreme Court made clear in Wal-Mart Stores v. Samara Bros. Inc., 529 U.S. 205 (2000), product configuration trade dress can never be inherently distinctive. Thus, someone trying to protect an ornamental design of a product as trade dress must demonstrate acquired distinctiveness—namely, that consumers identify the ornamental design as coming from a single source. This is obviously impossible when the product is not yet publicly known or available. In fact, it may take several years to gather proof of acquired distinctiveness, such as consumer surveys or advertising expenditures. Meanwhile, competitors can copy the nascent trade dress with impunity, which may prevent the trade dress from ever acquiring distinctiveness.

Because a design patent can be pursued on a product configuration before the product is even released (and usually issues more quickly than trade dress protection even where the latter is available), it can play a valuable role in the early days of the life of a design. What’s more, the design patent allows room for the design room to acquire distinctiveness by inhibiting others from copying the design.

Mr. Crouch argues that, from a transactional point of view, design patents may be more convenient than trade dress protection as well. Where protectable trade dress is the subject of a license or assignment, the parties must avoid “naked licensing”—a situation where a trademark (or trade dress) is transferred without its accompanying good will. A naked license can arise from subtle drafting issues with the transfer, and can be fatal to trademark or trade dress rights. The bottom line is that licensing or assigning trade dress rights can be a tricky affair fraught with traps. Design patent rights, on the other hand, can be easily and efficiently transferred.

Mr. Crouch’s research yields statistics that may surprise those used to the rigorous examination that utility patents undergo. For example, design patents enjoy an allowance rate of over 90% (compared with 44% for utility patents). In Mr. Crouch’s view, though issued patents are entitled to a presumption of validity, “the U.S. design patent examination system is operating as a de facto registration system rather than as one based on a true examination.” In this, he sees an opportunity for owners of ornamental designs: design patents may provide evidence of non-functionality. Under the Traffix doctrine, the existence of a utility patent covering a particular design creates a presumption that the patented design is functional. Under Mr. Crouch’s “anti-Traffix” doctrine, a prior design patent covering a design provides evidence (albeit non-conclusive) that the design is not functional.

In one sense, Mr. Crouch's statements seem at odds with one another. On the one hand, he argues that design patents are registered without rigorous examination, similar to copyrights. Presumably, that means design patent applications are not being thoroughly examined for functionality. On the other hand, the anti-Traffix doctrine allows design patents to serve as evidence of non-functionality. But why would courts assume the non-functionality of a design that was never truly examined for functionality?

Mr. Crouch argues that, even though the scope of design patents has not expanded at the pace of trademarks, trade dress, or copyright law, design patents still play an important role in limiting the expansion of trade dress rights. The functionality standard for trade dress protection is stricter than that for design patents. Accordingly, the relative ease of obtaining design patent protection may offer justification for courts limiting the expansion of trade dress protection, since design patent protection would still be available. This would have the long-term effect of reducing monopoly power, since a design patent expires in 14 years whereas a trade dress registration may exist in perpetuity. Thus, by shifting the type of protection we give to product designs, it may be possible to mute the anti-competitive effect of the protection.

Interesting Designs of the Week

What do these designs have in common?

A clock:

a glove:

and a torch:

Protecting Typeface - A Design Patent Monopoly?

As discussed in previous posts within The Ordinary Observer, software is rich with intellectual property rights. Although not often discussed, fonts[1] are one aspect of software that reveals an interesting interplay between branches of U.S. intellectual property law.

Given that U.S. copyright law protects “original works of authorship” including “pictorial” and “graphic” works, one might assume that U.S. copyright law could be used to protect typefaces. Indeed, in some countries, (perhaps most notably the U.K.) typefaces are protected by copyright law. However, the U.S. Copyright Office refuses to register copyrights in typefaces. The Office argues that under U.S. copyright law fonts per se are not subject to copyright and, according to the rules promulgated by the Office, “typeface as typeface” is not protectable. 37 CFR 202.1(e).

Courts appear to agree. For example, Eltra Corporation v. A Ringer held that typefaces, as such, are not protectable under U.S. copyright law. The court stated the following while flatly dismissing the argument that U.S. copyright law should protect a particular typeface, “Under Regulation 202.10(c) it is patent that typeface is an industrial design in which the design cannot exist independently and separately as a work of art. Because of this, typeface has never been considered entitled to copyright under the provisions of § 5(g).”

Yet within the realm of computer technology, the data that implements a typeface, i.e., a font, is (like most other software) subject to copyright. For example, Adobe vs. Southern Software, Inc. held that scalable fonts (such as TrueType font implementations are software and therefore subject to copyright protection under U.S. law). It is this protection of fonts that developers of open source fonts, such as the Liberation fonts, use to give legal basis to their licenses.

Nevertheless, protecting typefaces via the software that implements them is an incomplete solution. Design patents can be used to fill this gap. MPEP 1504.01(a) III. Design patents protect the actual typeface of the font itself, regardless of how the shapes that make up the typeface are rendered. For an example, D570903 is directed toward a numeric font. Thus, under U.S. law, design patents provide an important means for protecting a typeface that is the essence of a font.

[1] Font data is used by a computer system to render characters that subscribe to a particular typeface. A typeface, in contrast, is a specification of the shapes and markings that make up a particular group of characters. Thus, a typeface is a design specification that exists outside of, and extends beyond, any particular implementation of the typeface, e.g. a font.