Renaissance of
U.S. Design Patents
Steven M. Gruskin
(sgruskin@sughrue.com)
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?