Patent Law Blog (Patently-O)

Preliminary Injunctions and Obviousness in Design Patent Law

Titan Tire Corp. v. Case New Holland, Inc. 2008-1078 (Fed. Cir. 2009)

Titan (the patentee) and Goodyear (the exclusive licensee) combined to sue Case for infringement of its tractor tire design patent. (Des. Pat. No. D. 360,862). The district court rejected Goodyear's motion for preliminary injunctive relief - finding that the evidence indicated that the patent claim was probably obvious. On appeal, the Federal Circuit affirmed.

Standard for Preliminary Relief: In order to obtain the "extraordinary" relief of a preliminary injunction to stop infringement before a final judgment, the a patentee must prove that "(1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm in the absence of a preliminary relief, (3) the balance of equities tips in its favor, and (4) an injunction is in the public interest." The likelihood of success requires proof that the patentee "will likely prove infringement, and that it will likely withstand [validity] challenges, if any." When a defendant challenges a patent's validity, the district court must weigh the evidence (both for and against) to determine whether the challenge "raises a substantial question" of validity.

"Thus, when analyzing the likelihood of success factor, the trial court, after considering all the evidence available at this early stage of the litigation, must determine whether it is more likely than not that the challenger will be able to prove at trial, by clear and convincing evidence, that the patent is invalid. We reiterate that the “clear and convincing” standard regarding the challenger’s evidence applies only at trial on the merits, not at the preliminary injunction stage. The fact that, at trial on the merits, the proof of invalidity will require clear and convincing evidence is a consideration for the judge to take into account in assessing the challenger’s case at the preliminary injunction stage; it is not an evidentiary burden to be met preliminarily by the challenger."

The trial court's decision on preliminary injunctive relief is reviewed for abuse of discretion.

Obviousness of Design Patents: Design patent claims are subject to the nonobviousness requirement of Section 103(a) -- asking whether “the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” However, it is unclear how KSR applies to design patent cases. Unfortunately, this decision provides no answers except that "it is not obvious that the Supreme Court necessarily intended to exclude design patents from the reach of KSR."

Ordinarily, design patent obviousness analysis begins with a primary reference with design characteristics that "are basically the same as the claimed design." Secondary references are then combined so long as the secondary references are "so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other." Here, the lower court did not use the language of "primary and secondary references", but the Federal Circuit found that the lower court's obvious analysis was sufficient to for its denial of preliminary relief.

"[W]e cannot say the trial court abused its discretion in concluding that Titan was unlikely to withstand Case’s challenge to the validity of the ’862 patent on obviousness grounds.

Notes:

• Read the case: 08-1078.pdf
• The court explicitly avoided indicating whether obviousness analysis for design patents should be modified to conform to either KSR or Egyptian Goddess.

Bits and Bytes

• Comments on Patently-O: I have updated the commenting software. Now there are threaded comments, so it is easier to reply directly to a prior comment. If you sign-up for a free Typepad account then you can personalize the image associated with your moniker.
• Law Firms as Patent Owners: Photo site SmugMug recently filed a declaratory judgment action against the patent holding entity VPS, LLC. VPS previously settled with Pictage earning a "multi-million dollar fee" as well as with Kodak Gallery and Shutterfly. VPS's ownership is interesting. Its managing partners are all patent attorneys: Carl Moore (patent attorney at Marshall Gerstein); Timothy Vezeau (patent attorney at Katten Muchin); and Nate Sarpelli. The VPS patents were originally assigned to Monet, Inc. but subsequently assigned to the Marshall Gerstein firm. In 2002, the law firm assigned the rights to VPS. (See Pat. No. 6,321,231). SmugMug Complaint for Declaratory Judgment.pdf
• Design Patent Customs Registration: The IPO has voted to support a statutory change that would create a design patent registry within the Customs and Border Protection (CBP) bureau of the Department of Homeland Security. The CBP already keeps a registry of trademarks and copyrights to assist customs agents in preventing infringing importation through any of the 317 official ports of entry into the US. [CBP E-Recordation System] (No bill has been proposed.)
• Tivo v. DISH and EchoStar: $190 million.
• Update Your PTO Registration Data Online: Link. Before you can use the system, the OED will first send a letter to you with a User ID. After you respond, you will be sent a password.

Speeding-Up Design Patents

Design patents are cheap and usually involve little prosecution. In a recent report at "Design Day", the USPTO noted that the agency is working to further shrink the timeline. Notably, the average number of days from payment of the issue fee to issuance of the patent has shrunk by 2/3 since 2006. In FY2009 (thus far), the delay averages 52 days while in FY 2006, the delay averaged 140+ days. The average pendency is about 16 months. Applications in the "rocket docket" issue within 6 months on average.

Design Patents: Sailing Through the PTO Part II

In an earlier article, I noted that only 25.6% of recently issued design patents received at least one rejection during prosecution. I wanted to develop a better understanding of the reasons for rejections, I filtered for recently issued patents that had been initially rejected during process and then pulled-up their file histories using PAIR. For this study, I looked the first non-final rejection of only 86 file wrappers, but even that small number of cases showed a dramatic result.

In my sample, the first non-final rejection came in some combination of six basic forms: anticipation; obviousness; lack of enablement or written description; indefiniteness; new matter; and double patenting.

The surprising results are that only 3.5% (3 of 86) of the rejections were prior art related rejections. In three of the cases, the examiner rejected the pending application as obvious in light of the prior art, and in one of those cases the examiner also asserted that the claimed design was anticipated by the prior art. In the remaining 83 cases, the examiner conducted prior art searches but indicated that the claimed design was patentable over the art. Combining probabilities: My data indicates that fewer than 1% of recently issued design patents ever received a novelty or anticipation rejection. (At 99%CI, this may go as high as 2.5%). In other words, design patent applications sail through the PTO.

Although design patent prosecution does not have much focus on inventiveness, examiners are keen to ensure that the scope of the patent claim (via the drawings) is well defined. The most common rejection in my sample was based on confusion created by the drawings. In a design patent application the drawings represent the majority of the specification and also define the claim scope. Thus, it makes sense that confusing or inconsistent drawings would lead to rejection based on both the first and second paragraph of 35 USC 112. In my sample, 79.1% of the rejections (68 of 86) raised a combination of both lacking enablement/description and indefiniteness.

16.2% of the rejections (14 of 86) included an obviousness-type double patenting rejection against an applicant's own previously-filed application. Those rejections are curably through a terminal disclaimer. However, some applicants prefer to argue over the rejection and save patent term. Finally, 3.5% (3 of 86) of rejections focused on new matter added during prosecution. Often, the new matter was allegedly added when the applicant submitted pen and ink drawings to substitute for photographs found in the original.

A Registration System: My data indicates that our design patent system is approaching a registration system. But, there is no problem with a system of design registration - especially if design patents continue to be narrowly construed. Europe's design registration is working well as are the US systems of trademark and copyright registration. In the US, most property rights are registered or recorded rather than thoroughly examined, and those lower-cost mechanisms should probably be the default unless we have some reason to believe that thorough examination is necessary.

Notes:

• See, Dennis Crouch, Design Patents: Sailing Through the PTO, Patently-O (April 2, 2009).
• My samples of recently issued design patents consists of design patents issued Feb-April 2009.
• As I mentioned in the earlier post, these numbers are a bit skewed because the file histories of abandoned design patent applications are kept secret by the PTO unless used as a priority document. Just under 20% of design patent applications are abandoned during prosecution, and I suspect that a greater percentage of those are rejected during prosecution. This consideration would thus skew the results for someone considering the likelihood that a pending design patent application will be rejected.
• In an upcoming paper (not yet available) I note that design patents are often used as substitutes for trade-dress protection, but that the overlapping of regimes does not create significant problems.

Patents and the Auto Industry Bailout

In 2005, the PTO held a ceremony to commemorate the issuance of design patent number 500,000. The design patent went out to DaimlerChrysler for the design of the Chrysler Crossfire. Then Commerce Chief Gutierrez and PTO Director Dudas were on hand to note the importance of design patent design patents.

The patent has taken an interesting path – as shown by the assignment records at the PTO. Of course, DaimlerChrysler is gone, and Chrysler now owns the patent. In addition, Chrysler has given-up three separate security interests in the design patent. The first and second priority are apparently held in trust by the Wilmington Trust Company. The third priority is held by the US Department of Treasury based on a January 2009 grant and is apparently related to the company’s receipt of bailout money. [Assignment Data]. D500,000 is not the only patent implicated here – the assignment documents show that the US Treasury holds a security interest in more than 2,400 of Chrysler’s patents or pending applications. [More Assignment Data]

One important practice issue is raised: Absent a specific agreement, to what extent must the applicant consult secured creditors during the prosecution of a pending patent application?

Design Patents: Sailing Through the PTO

Over eighty percent of utility patent applications are initially rejected during prosecution. Some areas of technology – such as semiconductors – have a lower rejection rate while others – such as electronic commerce methods – have an even higher rejection rate.

I wanted to compare the result for utility patents with design patents. I pulled up information on 1000 of the most recently issued design patents (all issued in March, 2009) and parsed through the file histories to see how design patent prosecution compares. As the graph below shows, in my sample, only 25.6% of the recently issued patents received an initial rejection during prosecution. To be clear, this 25% rejection rate is for applications that eventually issue as patents. To get an overall picture of design patent rejections, we need to also consider the applications that are abandoned and never issue as patents. Recent PTO statistics show that a bit under 20% of design patent applications are abandoned. Because design patent file histories are kept secret unless a patent issues, we cannot know why any individual case is abandoned – However, the two most likely situations are that the applicant (a) failed to respond to a rejection or (b) failed to pay the issue fee. Even if we assume that 100% of the abandoned cases are initially rejected, that only pushes the initial rejection rate to about 40%.

As the graph below shows, of the 1000 issued design patents in my sample, only 4.1% received a final rejection during prosecution; and only 0.2% cases (2 out of 1000) included a notice of appeal. None of the 1000 cases included an appeal brief.

The design patents in the study had an average pendency of 15.3 months calculated by finding the number of months between the filing date and the issue date. As may be expected, applications that included at least one rejection took considerably longer to issue (21.5 months) as compared to those that were never rejected (13.2 months). (These means are different at 99.9 CI).

Most design patents (58%) in my sample have only one inventor. However, 69% of the inventors are listed as joint inventors. A number of the muliti-inventor patents included trans-national inventorship with inventors originating from two or more separate countries. About 1% of the applications listed at least one inventor from the US & Great Britain. Another 1% listed at least one inventor from both the US and China.

Protecting Design Patents on Shoes

Nike v. Wal-Mart (N.D. Ill. 2008)

Nike has sued Wal-Mart for design patent infringement asserting infringement of Pat Nos. D498,914 and D499,248. As with many design patent lawsuits, the patentee here (Nike) also makes a product covered by the design. Design patents have become more important to Nike as the company's trademark 'swoosh' has been less prominent in recent shoe designs. Every year during the past decade, Nike has ranked in the top ten owners of newly issued design patents. 

Damages for design patent infringement may be calculated a few different ways. Section 284 calls for compensatory damages with a base of a “reasonable royalty.” Section 289 looks to disgorge profits from the infringer.

In the late 1990’s, Nike won another shoe design patent case against Wal-Mart. In a damages appeal, the Federal Circuit found that Nike had not properly marked its products — holding that to take advantage of the marking statute, a patentee must prove “that substantially all of the products being distributed were marked, and that the marking was substantially consistent and continuous.” Nike Inc. v. Wal-Mart Stores, 138 F.3d 1437 (Fed. Cir. 1998) (Newman).

Notes:

• The top image is a portion of the infringement claim chart from the complaint. The second (pink) image is a Nike shoe.
• First seen on Patent Hawk
• Nike Complaint

En Banc Federal Circuit Revives Design Patent Law

Egyptian Goddess v. Swisa (Fed. Cir 2008, en banc)

In a rare unanimous en banc opinion, the Court of Appeals for the Federal Circuit has revived the value of design patent protection by loosening the standard for infringement. The opinion – penned by Judge Bryson – rejects the "point of novelty" test as a requirement to prove infringement of a design patent. Instead, the judges agree that the 1871 Gorham "ordinary observer" test is the "sole test for determining whether a design patent has been infringed."

The focus of the Gorham test is to look for substantial similarity between the patented design and the accused design. It is called the ordinary observer test because the similarity is considered from the perspective of an ordinary observer who is familiar with the art. Although Gorham only requires a comparison between the patented and accused designs, prior art designs will generally be useful for highlighting differences. A second pro-patentee rule that emerges from this case is that the burden of production of prior art designs will fall on the accused infringer. On claim construction, the Federal Circuit agreed that a 'verbal description' of the diagrams is not required, but will not – by itself – be reversible error.

Ordinary Observer With a Tight Focus: Although the patentee was able to change the law, it actually lost the day. In the appeal, the CAFC concluded that even under the ordinary observer test, "no reasonable fact finder could find that EGI met its burden of showing, by a preponderance of the evidence, that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design."

The courts application of the law shows that proving infringement under the ordinary observer test will not be a walk in the park for design patent holders. Many cases will likely still turn on technical points of similarity rather than simply a broader totality of similarity. Yet, despite the potential difficulties, the situation is vastly improved from the hardships imposed by the point of novelty test.

More to come…

Microsoft's Patenting Trend

Several years ago, Microsoft announced its new policy of obtaining patents. As the numbers below — the software company is being successful in this push.

(Data here: http://www.uspto.gov/web/offices/ac/ido/oeip/taf/all_tech.htm). The company’s most recent design patent is directed to an icon of a handheld device .

 

Tags: Microsoft, Patent

Auto Parts Design

Ford Global Technologies v. ITC (Fed. Cir. 2008) (The F-150 ITC Case) (CURRENTLY ON APPEAL)

In 2007, the International Trade Commission (ITC) issued a final decision finding three Ford design patents invalid based on a prior public use. The patents relate to various parts of its F-150 truck design. Ford had asked the ITC to stop generic parts manufacturers from imports of the patented designs that were flowing in from Taiwan. In its decision, the ITC found seven of the design patents valid and infringed, but found that three of them were invalid.

Prior Public Use: The alleged prior public use in this case was an event where Ford selected 900 members of the public to attend in small groups and provide feedback on proposed car designs. At the event, security was "high," cameras were banned as were sketches. Thus, according to Ford, the attendees could not have truly disclosed the ornamental features of the patented design. The invitees were also paid – and thus, disclosure to those individuals should be presumptively be considered private (as would normal in house discussions with an employee). Ford also argues that the payment to attendees is clear evidence that this public use was not "commercial exploitation."

Almost no Scope: Many design patent holders run from the Federal Circuit's 1988 in re Mann decision announcing that "design patents have almost no scope. In the auto-parts industry, however, no scope is needed so long as the patented designs are identical to the marketed products. The generic part importers are "slavishly copying" Ford's original design -- thus infringement should be open-and-shut. (See discussion below).

Ford embraced the narrow scope of its design rights – arguing that there its controls over the feedback event of preventing cameras or drawings ensures that none of the attendees will be able to place the invention in the public domain. Notably, in a recorded post-show follow-up, attendees who were asked about the design could only describe it in general terms such as "beefy."

"The video evidence shows that the claimed ornamental features of the patents-in-suit were not in the public's possession. Without cameras or sketches - which were specifically prohibited - there was no way here that the claimed designs could have been disclosed to the public. Ford therefore did not "remov [e] inventions from the public domain which the public justifiably comes to believe are freely available." … In short, "beefy front end" and "a chopped top" do not describe or disclose the design inventions.

Is Point of Novelty Analysis Required?: In its counter-appeal, the Taiwanese manufacturers argue that infringement was improperly found because the ITC failed to perform the point-of-novelty test which, according to the defendants, is required even when the patented design is identically copied.

"[E]ven though the court compares two items through the eyes of the ordinary observer, it must nevertheless, to find infringement, attribute their similarity to the novelty which distinguishes the patented device from the prior art."' Lawman, 437 F.3d at 1386 (quoting Litton, 728 F.2d at 1444).

The defendants are correct that Lawman and Litton appear to require the point-of-novelty test in every case of infringement. That issue will likely be resolved in the upcoming en banc decision in Egyptian Goddess. In addition, the defendants argued that the design patents should be considered obvious under KSR v. Teleflex (2007). As in that case the claims appear to be composed of a set of elements all found in the prior art.

An amicus brief was filed supporting the generic manufacturers. However, I have not yet seen that brief. In addition, the ITC recently began investigating another design patent complaint filed by Ford against the same generic manufacturers. This new case involves repair parts for the 2005 Mustang redesign.

Note:

• A reader reminded to me to mention pending H.R. 5638 and the PTO’s town hall meeting next Monday to discuss design patent issues. (written comments due July 15). 
• Unlike the patent reform bill, H.R.5638 is a partisan Democrat sponsored bill that would primarily support the insurance industry and make automobile repair less expensive by excusing repair parts from patent infringement. The bill would amend 35 USC 271 by adding the following subsection:
• (j) It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States any article of manufacture that itself constitutes a component part of another article of manufacture, if the sole purpose of the component part is for the repair of the article of manufacture of which it is a part so as to restore its original appearance.

Some Design Patents That Have Been Litigated

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Anti-TrafFix: Design Patent Provides Evidence of Non-Functionality in Trade Dress Claim

In TrafFix Devices v. Mktg. Displays, the Supreme Court held that the existence of an expired utility patent covering a particular product design provides strong evidence that the design is “functional.”* Consequently, a party would be had-pressed to claim non-functional trade dress protection for the previously patented design. In Keystone Mfg. v. Jaccard Corp., the W.D.N.Y. federal court explored how trade dress protection is impacted by an expired design patent.

Expired Design Patent: Jaccard’s hand held meat tenderizer is covered by its U.S. Design Patent No. D 276,685. The design patent expired in 1998 – seemingly leaving an open avenue for direct copycat competition.  As part of a larger lawsuit, however, Jaccard asserted trade dress rights over its product.

Functionality: Jaccard argues that design patents should be treated as the mirror image of utility patents in a functionality analysis: If a utility patent creates strong proof of functionality, a design patent should provide presumptive evidence of non-functionality.

The district court rejected the suggestion that the design patent creates a presumption of non-functionality.  Instead, the court held that the design patent simply serves as another piece of evidence to be used by the jury in determining non-functionality. This conclusion comports with McCarthy on Trademarks:

“A design patent, rather than detracting from a claim of non-functional trade dress or trademark, may support such a claim . . . [W]hile a design patent is some evidence of non-functionality, alone it is not sufficient without other evidence.”

Curiously absent from this decision is any analysis of the populist notion that expiration of a patent transfers to the public a right to copy and use the patented elements.  

• * Although there are various definitions of functionality, in trade dress law the term generally refers to whether the element is essential for the product’s use or affects the cost/quality of the product. Only non-functional designs are protectable as trade dress.
• Keystone Mfg. v. Jaccard Corp., 2007 U.S. Dist. LEXIS 13094 (W.D.N.Y. Feb 26, 2007).
• There are several cases in conflict with Keystone Mfg on this point. Fuji Kogyo Co., Ltd. v. Pac. Bay Int'l, Inc., 461 F.3d 675 (6th Cir. 2006) (noting that a design patent serves as presumptive evidence of non-functionality).

 

Re-Litigating Gorham v. White: Design Patents at the Supreme Court

Saint-Gobain Calmer, Inc. (now MeadWestvaco Calmer) v. Arminak & Associates, Inc. (on petition for certiorari 2008)

In 2007, the Federal Circuit dealt a serious blow to design patent protection by determining that an intermediate corporate purchaser is the “ordinary observer” for infringement analysis.  A professional corporate purchaser is presumably more likely to see differences between the patented design and an accused infringing device — thus making infringement more difficult to prove.

Calmer’s design patent, for instance, covers a sprayer shroud that is then combined with the trigger mechanism, bottle, etc.; filled with some liquid; and shipped to Wal-Mart for retail sale. The Federal Circuit’s holding looks to the typical buyer at the point where the allegedly infringing shroud is first sold to determine whether that individual would believe that “the patented design as a whole is substantially the same as the accused design."   

Calmer has now petitioned the Supreme Court asking two questions:

1. Whether the [Federal Circuit’s] use of expert viewpoints to determine design patent infringement is in direct conflict with this Court’s decision in Gorham Co. v. White, 81 U.S. 511, 529 (1871)?
2. Whether the [Federal Circuit’s] test for design patent infringement of a component product, which considers deceptive similarities only as to the first purchaser of any product including the patented design, directly conflicts with its own precedent and with this Court’s “ordinary observer” test mandated by Gorham Co. v. White, 81 U.S. 511, 529 (1871), by excluding not only unsophisticated purchasers but also later purchasers of products including the patented design as a component?

As I write in an upcoming paper, the justification for design patent protections is more akin to traditional trademark policy than utility patent policy. With that in mind, it makes some sense allow design patents to operate at the retail level.

Notes:

• Dennis Crouch, Corporate Parts Buyer as Ordinary Observer, Patently-O (Sept 14, 2007).
• See also, Egyptian Goddess v. Swisa (en banc 2008)
• File Attachment: Calmer Petition (503 KB)

Oakley's Sunglasses and Design Patents

Oakley recently sued Fox, Marvel, and others for infringement of its design sunglasses design patent No. D470,166. According to the complaint, the movie industry has knocked-off Oakley’s design to promote Silver Surfer DVDs.

Oakley owns over 100 design patents on its various sunglass designs. Since 2004, the fashion trend-setter has filed over 30 complaints against accused infringers.

Apparently, Mardsen wore genuine Oakley in his role as Cyclops. What damages if they had been fakes?

Patently-O Bits and Bytes No. 14

• Design Patent Law: The House Subcommittee on IP held hearings on amendments to the design patent laws. The two primary specific issues on the table are (1) whether to eliminate design patents covering replacement automobile parts and (2) whether to extend IP protection to fashion designs. [LINK].  The IP group will hold PTO oversight hearings again next week.  
• Replacement Parts: IPO recently voted to oppose any legislative exemption for particular products or technologies from the IP laws:  "In particular, IPO opposes legislation that would exempt replacement automobile parts from infringing U.S. design patents."
• LexisNexis Patent Center: lexisnexis is now in the blog world with their "Patent Center."
• Missing Dates: The PTO revived Aristocrat's national stage application even though filed a day late.  During litigation, however, the district court found the revival an improper extension of the law. [Link] The patentee appealed to the CAFC with the question of "Whether a patent application abandoned for failure to comply with deadlines set forth in 35 U.S.C. §§ 371(d) and 133 may be revived based on mere 'unintentional' delay where those provisions provide for revival only for "unavoidable" delay." Now, IGT responds.
• New Administrative Judge: According to Hal Wegner, the PTO has appointed Professor Lorelei Ritchie de Larena to the position of administrative judge on the TTAB BPAI. Judge Ritchie has been working in tech-transfer for several years while teaching at the same time. As the rate of appeals continues to rise, the PTO will need to continue to hire high quality judges. At the same time, these judges will begin to feel an even stronger pull to jump ship to law firms looking for inside experience and connections. [Related note: can someone send me a list of BPAI Judges? dcrouch@patentlyo.com]

Design Patents: Controlling Pendency

Over the past decade, the PTO has taken control of pendency problems in the design patent area. In the early 1990’s design patents averaged over 30 months in prosecution. By 2001, that average pendency had fallen to less than 15 months.

The low pendency can allow design patents to serve as a preliminary substitute for future trade dress protection.  A design patent application offers immediate ‘patent pending’ status and would, in all likelihood, issue before the product would garner the secondary meaning sufficient for trade dress protection.  This is the approach taken by Apple with its iPod design patent applications. One of its issued iPod design patents (US D549,237 filed Aug 24 2005) appears identical to the company’s trademark design application (Serial No. 78925932 filed July 2006). The trademark case is still pending because Apple must make the required showing of secondary meaning.

The major problem with this ‘patent then trademark’ approach is the narrow scope generally offered by design patents during litigation. This may change as the Federal Circuit is set to reconsider its design patent infringement jurisprudence in the upcoming Egyptian Goddess en banc case.

There are major differences between the design patent examining corps and the utility patent examining corps — most notably, design patent examiners appear to stay-put. The 49 primary examiners associated with patents issued on December 4, 2007, have, on average, examined 3200+ design patents as primary examiners over an average of 12.5 years. (Medians of 3047 and 11.5 years respectively). Approximately 2/3 of design patents are prosecuted by one of the primary examiners without any assistance from an assistant examiner. For the same patents, assistant examiners have an average history of 400 examined design patents over a period of two years. (Median of 200 and 18 months respectively).

 * The graph above is based on a recently compiled dataset of the entire set of 300,000+ design patents issued between December, 1976 and December, 2007.

Counting Design Patents

In 2007, Samsung Electronics received over 550 design patents — the most ever issued to a single company in one year.  Sony holds the most design patents, and is followed closely by Nike. The following table shows the company awarded the most design patents each year:

Louis Zarfas is the primary examiner associated with the most issued design patents. Mr. Zarfas has allowed over 16,000 design patents since his first (as a primary) in 1978. Over 1,000 of those design patents relate to shoe designs claimed by companies such as Nike, Reebok, AVIA, Asics, LA Gear, Rockport, Sketchers, Wolverine, Keds, Louis Vuitton, Timberland, Berluti, and Kangaroos.

Recently issued design patents (issued 2000–2007) were, on average, pending for 16.2 months. Companies with at least 100 design patents during that period had about one month less pendency than those with fewer patents. Nike has prosecution down to a science — and averages less than 9 months pendency (filing to issuance). Toward the other end of the pendency chart, Apple averages over 21 months.

During the 2000–2007 period, approximately 75% of examinations were handled by primary examiners without any assistance from an assistant examiner. As with utility patents, the pendency for cases without an assistant is significantly less than for those with an assistant. Here, the difference is about two months.

 * These numbers are based on a recently compiled dataset of 300,000+ design patents issued since 1976 on file with DDC.

Why Design Patents Need Not Satisfy 35 U.S.C. § 101?

35 U.S.C. § 171 is a unifying provision – briefly stating that “except as otherwise provided,” the entire Patent Act applies equally to both utility patents and design patents.  Thus, design patents must fit within the requirements of §§120 and 112.[1] On the other hand, § 122 expressly exempts design patents from the publication requirements.

The enigma is § 101 and its definition of utility. Section 101 includes no explicit exception for designs. But, even a novice observer would question how a non-functional ornamental design can at the same time be “useful?”

The Supreme Court appears to have answered this query in Footnote 5 of its 2001 opinion in J.E.M. Ag Supply v. Pioneer Hi-Bred.[2] In that case, the Court held once again that the patentable subject matters scope of 35 U.S.C. § 101 is “extremely broad” and that the scope for utility patents certainly includes plants despite the existence of § 161 “plant patents.” 

In Footnote 5, the Court briefly compares § 101 utility patents with § 161 plant patents and § 171 design patents. “Patents issued under § 161 are referred to as ‘plant patents,’ which are distinguished from § 101 utility patents and § 171 design patents.”[3] 

The implication from the Court’s comparison is that design patents are not subject to the requirements of § 101 (despite the lack of any statutory exceptions). Thus, a patented design must be “new, original[, ] ornamental [and] an article of manufacture.” However, the design need not be useful.

---

[1] In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998).

[2] J.E.M. Ag Supply v. Pioneer Hi-Bred Int'l., 534 U.S. 124 (2001)

[3] Id. at fn. 5.

 

Sidenote: The Apple iPod design patent (US D549,237 filed Aug 24 2005) appears to be identical to the company’s trademark design application (Serial No. 78925932 filed July 2006). A continuation patent has also issued which also claims the screen shape. (US D542,808) Interestingly, in the trademark case (response to a rejection), Apple admitted that the “rectangular video screen design is functional.”

Ford Design Patents Block Import of Repair Parts - Infringers Call for Patent Reform

In re Certain Automotive Parts, 2007 WL 2021234 (ITC 2007)

Ford Motor Company owns dozens of design patents covering various aspects of its vehicle designs. D496,890, for example, covers a vehicle grille; D493,552 covers a vehicle head lamp; D503,135 covers a bumper lower valance; and D496,615 covers a side view mirror. In 2005, Ford initiated a Section 337 action before the International Trade Commission (ITC) asking for an exclusion order against various auto parts importers whose imports violated the Ford design patents. For the most part, the accused parts are used to repair post-crash vehicles.

An administrative law judge (ALJ) found that the majority of the asserted patents were valid and infringed, although some patents were invalid.  The ITC then issued an order to exclude importation of the unlicensed repair parts.

Repair doctrine: Over the years, courts have created a non-statutory doctrine of permissible repair. Under the doctrine, post-sale repairs made to a patented object are not considered actionable. On the other hand, reconstruction of the patented object will be actionable as an unlicensed “making” of the invention.

Although interesting, the repair doctrine does not apply here. The accused infringers are not repairing anything — rather, they are importing replacement parts that on their own are infringing.

Calls for Patent Reform: After losing on the merits, the would-be importers have jumped on the patent reform bandwagon asking for a “repair parts” exception to the design patent laws. [Quality Parts Coalition]. Car manufacturers would like to go the other way — adding vehicle hull design protection to the Copyright Act. [See Boat Hull statute]

Appeal: The case, captioned as Ford v. ITC, 07–1357, is now on appeal at the CAFC — A decision is expected summer 2008.  The critical question for Ford — will the patents pass the CAFC’s dreaded points-of-novelty test?

Patently-O Tidbits

• Lemley (Stanford) & Myhrvold (IntVen) have released a short article on “how to make a patent market.” They suggest that an information gap is one problem creating friction in licensing negations. The solution — require publication of patent assignments and license terms. [LINK]
• Over the past few weeks, we have directed some focus on the protection of industrial designs. Why? (1) the law surrounding protection of industrial designs is in disarray; (2) I expect that protection of industrial designs will become more important as utility patent protection becomes more difficult and more costly; and (3) if well protected, industrial designs & fashion rights may well be worth more than the value of all non-pharmaceutical utility patents.
• New Patent Law Job Postings:
• Patent Engineer V - Novellus Systems - Silicon Valley
• Patent Engineer III - Novellus Systems - Silicon Valley
• Patent Prosecution - Schneck & Schneck - San Jose
• Electrical Engineering Patent Attorney - Washington DC
• Sr Mechanical Associate - Litig and opinions - Washington DC

Design Patents: Corporate Parts Buyer as Ordinary Observer

Arminak v. Saint-Gobain Calmer (Fed. Cir. 2007).

In yet another serious blow to design patent protection the Federal Circuit has affirmed a lower court ruling that Arminak's spray nozzle design is not infringed by Calmer.

Design patent infringement is defined both in 35 U.S.C. 271 and 289.  According to Section 289, a design patent is infringed by unauthorized commercial manufacture, use, or sale of the design or a "colorable imitation."

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties. 35 U.S.C. 289.

Infringement: Overshadowing the statutory guidelines is the CAFC's judicially created infringement jurisprudence. According to the CAFC, infringement requires satisfaction of two distinct tests: First, in the eyes of an "ordinary observer," the accused design as a whole must be deceivingly similar to the patented design. Second, the accused design must appropriate one or more points-of-novelty that distinguish the design from the prior art.

Ordinary Observer: Like the PHOSITA in utility patent cases, the ordinary observer is a mythical being. However, instead of being 'skilled in the art,' the ordinary observer is aware of the patented design, but is not an expert in the art.

Arminak manufactures and sells spray nozzles. However, Arminak does not sell on a retail level.  Rather, the nozzles are purchased by other manufacturers who join them with bottles full of product.

The corporate nozzle buyers can distinguish between Arminak & Calmer nozzles without much trouble. Once assembled, retail customers have difficulty in distinguishing between the nozzles once assembled.  The case then turns on whether the ordinary observer is defined as the corporate buyer of the nozzle or a retail customer of the fully assembled product.

Sitting by designation, Judge Holderman determined that the ordinary observer should be defined by the patentee’s corporate structure. Because Arminak’s products pass through a middle-man for further processing, it cannot count the downstream retail purchasers as ordinary observers who “buy and use” the sprayer. Rather, the ordinary observer is the corporate nozzle buyer.  (Thus, eventual customer confusion regarding the final product makes no difference).

It was undisputed that a corporate buyer would not be deceived by overall similarities between the accused and patented designs — thus no infringement.

Point of Novelty: The panel also found that the accused design did not appropriate any “points of novelty” of the patented invention. In doing so, the court found that a side-by-side detailed comparison between the accused product and the patent design drawings was appropriate.

To establish infringement in a design patent case, the district court is required to compare the patented design with the accused design. Without comparing the patented design with the accused design, there was no way for the district court to determine whether an ordinary observer would find the accused design deceptively similar and whether the accused design appropriated points of novelty.

For utility patent experts, this type of analysis is second nature. However, for over 100 years prior to founding the CAFC, the rule has been that design patent infringement jurisprudence does not allow for such “side by side” examination. See Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871) (rejecting a side-by-side comparison as leading to an ‘expert’ result rather than that of an ‘ordinary observer’).

Design Patent Litigation

In the past twenty years, the US Patent & Trademark Office has issued just over 268,000 design patents. During that time, almost exactly one percent (1%) of those issued design patents have been litigated to some degree. (i.e., at least a complaint was filed asserting infringement of the patent). The most commonly litigated are design patents covering ornamental features of shoes (7% of litigated patents) and lamps (5% of litigated patents). Other commonly litigated products include furniture (chairs & tables), eyeglasses, and golf equipment.

35 USC 171 outlines the scope of design patents as “any new, original, and ornamental design for an article of manufacture.”  The MPEP narrows this definition to only include “visual characteristics” of a design – although a court could force the PTO to include other sensory characteristics.  I suspect a product with ornamental textures – even if not visually distinct — could be protected (especially if the product was designed for blind individuals).  A further (and improbable) stretch would be to define design to include associated music, scent, and taste.