Renaissance of U.S. Design Patents Steven M. Gruskin ([email protected]) Sughrue Mion, PLLC Washington, D.C. PLI Seminar, New York City January 31, 2014 Design Patents in the U.S. • Why the Renaissance for Design Patents? – High Profile Decisions • Crocs v. ITC (2011) • Apple v. Samsung (2012) – Easier to prove infringement standard • Egyptian Goddess, Inc. v. Swisa, Inc. (2008) – More Difficult to Invalidate • High Point Design, LLC. v. Buyers Direct, Inc. (2013) Design Patents in the U.S. (cont.) • Why the Renaissance for Design Patents? (cont.) – Heighted Scrutiny of Utility Patents • Easier to Invalidate (KSR) • Damages (no more 25% Rule) Securing Design Patent Rights • A design patent may be awarded for any "new, original and ornamental design for an article of manufacture." 35 USC §173 • Design v. Utility Patents – U.S. Patent Office awards utility patents for how a product functions, and awards design patents for how a product looks Securing Design Patent Rights • Content of a Design Patent Application: – Drawings – A single claim (subject matter claimed in solid lines, with unclaimed subject matter reduced to broken lines) Securing Design Patent Rights • A design patent may be awarded for any "new, original and ornamental design for an article of manufacture." 35 USC §173 – No requirement to claim the entire "article of manufacture" Watch Design Example Watch Company has developed a new design for a watch as shown, and wants to protect the design in the marketplace. Watch Design Example Option 1: Protect watch as a whole (the watch showing the watch band, the face and the clasp) Option 2: Protect a portion of watch (just the watch face with guitar pick and musical notes on the watch face) Option 3: Protect the design or ornamentation on the watch (just the guitar pick on the watch face) • Ornamentation (guitar pick) would be shown in solid lines & watch face would be reduced to broken lines (not part of claimed design) Watch Design Example Securing Design Patent Rights • A design patent protects the nonfunctional or ornamental aspects of a product – most objects have at least some ornamental aspects and can be protected Design Patent Infringement • Ordinary Observer Test – Gorham Mfg. Co. v. White, 81 US 511 (1871) ordinary observer would be deceived into purchasing the accused product believing it to be the patented product Design Patent Infringement • "Dark Ages" of Design Patent – "Design patents have almost no scope" • In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) – "Point of Novelty Test" • Patentee also had to show accused products appropriated the points of novelty that distinguished patented design from prior art Design Patent Infringement • Federal Circuit eliminated "Point of Novelty" Test in Egyptian Goddess, Inc. v. Swisa – Ordinary Observer Test is the sole infringement test (but still consider prior art)" • "whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design" Crocs v. ITC • Crocs sued eleven companies in the ITC ITC based on 6,993,858 and D517,789 • Crocs requested a General Exclusion Order from ITC to prevent importation of all infringing shoes (including non-parties) Crocs' Design Patents • D517,789 Alleged Infringing Products Infringement Analysis Not Infringed* Pronounced Ridge Rear Portion Middle Portion Front Portio n Rear Portion Middle Portion Front Portio n *Many of the other accused companies were found to infringe on appeal Infringement Analysis Round Hole Rounded Rectangular Hole Top Portion of Upper Tread No Tread Vertical Band Portion of Upper Rounded Rectangular Hole Tread No Tread Crocs v. ITC • ITC initially found Crocs' patents not infringed • Crocs appealed and CAFC overturned the ITC Findings and Remanded – ITC used a verbal claim construction and CAFC ruled the claim scope is "the design as shown in Figures 1-7" not written description of the drawings – ITC ultimately found infringement and issued a General Exclusion Order in 2011 Apple v. Samsung Apple v. Samsung • Jury Award: $1.05 Billion – Largely "total profits" under 35 USC §289 • Additional remedy for design patent infringement- total profit of the patented article • Samsung found to infringe 3 Design Patents – D618,677 (front face surface of screen) – D593,087 (rounded corners) – D604,305 (user interface) Apple's Design Patents D618,677 D593,087 D604,305 Samsung's Products Galaxy S 4G Source: www.engadget.com Infuse 4G Infringement Analysis D618,677 Galaxy S 4G Source: www.engadget.com Infuse 4G Infringed Source: www.engadget.com Infringement Analysis D593,087 Galaxy S II Source: www.engadget.com *Galaxy S II was found to infringe the '677 patent Not Infringed* THANK YOU QUESTIONS?