Sport Dimension v. Coleman Company - Federal Circuit Seeks to Clarify Functionality

Last week, the Federal Circuit issued an opinion in Sport Dimension, Inc. v. The Coleman Company, Inc., No. 15-1533 (Fed. Cir. Apr. 19, 2016), seeking to clarify how courts may properly construe design claims containing significant functional aspects.  The court's decision adds some weight behind last year's Federal Circuit decision in Ethicon Endo-Surgery, Inc. v. Covidien, Inc., and answers a few additional questions related to design patent functionality.

In order to explain this case, we first have to see the problem.  To do that, we begin by looking back to the Federal Circuit's 2010 decision, Richardson v. Stanley Works, Inc.  That case concerned design patent D507,167 for a multi-function tool, and an alleged infringing tool designed by Stanley, as shown below:

Design Day Report from the Front Lines Slides

We've had a few requests for the slides from yesterday's Design Day - Report From the Front Lines presentation.  We're happy to share them with the usual disclaimers.  This presentation was prepared for educational purposes only and does not represent the opinions of either the U.S.P.T.O. or Lando & Anastasi.  Nor can we guarantee the accuracy of the underlying data presented, which was gathered from third party sources.

Here is a link to view and download the slides.

If you re-post or use the slides, please be sure to give credit to William Seymour of Lando & Anastasi, LLP and the Ordinary Observer design patent blog.

Enjoy!

USPTO Requests Comments on Proposed Written Description Guidance for Design Patents

The United States Patent and Trademark Office has issued a Request for Comments on its proposed guidance to patent examiners regarding the written description requirement in Section 112 of the Patent Act with respect to design patents.  The proposed guidance would address situations where an amended or continuing application claims only a subset of the elements disclosed in an earlier or original application.  In other words, in the example below, if the original claim comprised the images on the left, can the amended claim cover only the subset of elements shown in solid lines on the right?

(Future) Motion for Temporary Restraining Order Granted

The annual Consumer Electronics Show (CES) provides a highly publicized venue for companies to showcase their cutting-edge technology and innovative designs.  Just days before this year’s show in Las Vegas, NV, one design patent owner prevented an alleged infringer from distributing, promoting, and offering to sell potentially infringing products.  Follow the jump to learn why an emergency temporary restraining order was granted to the design patent owner without an opportunity for the defendant to appear.

Design Patent Figures with 3D CAD Software

Similar to a utility patent, a proper design patent application will include (among other components) a description of the design, a claim, and one or more drawings or photographs. Since the drawing disclosure is often considered the most important element of the application, a great deal of care is generally taken when preparing the drawings. For instance, many applicants will enlist the assistance of a draftsman to prepare “formal” drawings. However, the service of a draftsman can be expensive, and we often get asked if there are alternative ways to prepare drawings. In particular, the question is often raised: can 3D CAD images, such as those prepared with SolidWorks, be used to satisfy the drawing requirement? Follow the jump for an answer and analysis.

Federal Circuit Ruling Opens the Door to "Offensive" Design Patents

This week, the en banc Federal Circuit issued an opinion in In re Tam, No. 14-1203 (Fed. Cir. Dec. 22, 2015), holding that the relevant portion of Section 2(a) of the Trademark Act barring the patent office from registering scandalous, immoral or disparaging marks was an unconstitutional infringement of the First Amendment.  The Federal Circuit's decision has significant implications for another trademark case pending in the Court of Appeals for the Fourth Circuit, wherein the Washington Redskins seek to overturn the Patent and Trademark Office's cancellation of the "Redskins" trademark on the same grounds.   Pro-Football, Inc. v. Blackhorse,  No. 15-1874 (4th Cir. filed Aug. 6, 2015).  But what does this decision mean for design patent law, which retains the authority to refuse to issue patents covering ornamental designs deemed "offensive to any race, religion, sex, ethnic group or nationality?"  Find out after the jump. 

Samsung Appeals to the Supreme Court! ... (but probably won't get there)

It's not every day that the New York Times reports on design patent news.  But when it does, it usually has something to do with smartphones.  

The big news in design patent law today is Samsung's inevitable appeal to the Supreme Court from its August loss (mostly) at the Federal Circuit.  Just last week, Apple and Samsung appeared to finally be putting this lawsuit behind them, when it was announced that Samsung had agreed to pay Apple $548,176,477 to satisfy the judgment entered by Judge Koh and affirmed by the Federal Circuit.  However, in the agreement, Samsung had reserved its right to "reimbursement" if the judgment is reversed.  

In its petition for writ of certiorari, Samsung points out two alleged errors by the Federal Circuit - 1) whether the Federal Circuit should have "factored out" the allegedly functional aspects of Apple's design patents, and 2) whether the Federal Circuit erred by not apportioning Samsung's profits between the profits attributable to the infringing design and the profits resulting from other aspects of the infringing products. 

Of course, Samsung worded the questions presented somewhat differently:

The questions presented are:

1. Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?

2. Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

Regardless of how Samsung chooses to articulate the issues, however, a Supreme Court hearing seems unlikely, in the opinion of this author.  

With respect to the first issue, the Federal Circuit did an excellent job of clarifying its own, somewhat confusing precedent from cases like Richardson v. Stanley Works.  In Apple v. Samsung, the court explained that that the functional aspect of a claim may be conceptually factored out as part of claim construction without literally "exclud[ing] those components in their entirety."  See our earlier post on this topic here.  This pronouncement of the law will help simplify design patent claim construction, while emphasizing to juries and judges that designs do not protect functional concepts, only the appearance of an article of manufacture. 

With respect to the third issue, it is highly unlikely that the Supreme Court would attempt to blatantly overrule the clear, expressed wishes of Congress.  Samsung seems to argue that § 289 is just "really old."  But it's unclear why the Supreme Court's analysis of this argument would be any different from the Federal Circuit's:

In reciting that an infringer “shall be liable to the owner to the extent of [the infringer’s] total profit,” Section 289 explicitly authorizes the award of total profit from the article of manufacture bearing the patented design. Several other courts also concluded that Section 289 authorizes such award of total profit. ... The clear statutory language prevents us from adopting a “causation” rule as Samsung urges.

So while its exciting to see design patents in the news, don't hold your breath for the first Supreme Court design patent case in 100+ years.  Of course, we could be wrong and, if we are, we will be the first to celebrate.