AIPLA
1
US DESIGN PATENT
LAW UPDATE
John T. Johnson, Esq.
January 29, 2013
Tampa, Florida
2
US: Design v. Utility
 Utility Patent
–Protects any new and useful process, machine, article of manufacture,
or composition of matter.
–Protects functional characteristics
 Design Patent
–Protects a new, original, and ornamental design for an article of
manufacture.
–Protects appearance
3
Examples of Protectable Designs
 Overall product designs
 Partial designs and ornamentation
 Packaging
 Patterns
 Fonts
 Icons
4
US Basics
 Application is examined
– Formalities
– Novelty and Obviousness
 Scope of single claim determined by drawings
 Not published until issue
 Patent presumed valid
 14 year term from issuance
 No annuities
5
Priority Claiming in US
 Can claim priority to an application filed in:
– foreign country, which affords similar privileges; or
– a WTO member country
 Must file US application within 6 months
 Recognized priority claims based on applications filed under certain
agreements. For example:
– Hague Agreement
– Uniform Benelux Act
– European Community Design
6
Maximizing Protection in the US
 Include multiple embodiments
– Protect the idea in its various expressions
– May have to argue against restriction
 Disclaim environmental features
– Show non-critical features only in dashed line
 Limit drawings to design elements
– Remove technical details before filing
 Avoid photographs
7
Example of Multiple Embodiments
 Protect the idea in its various expressions
 May have to argue against restriction (or file multiple
applications)
8
Example of Multiple Embodiments
9
Example of Amend to Disclaim
 Show non-critical features only in dashed line
10
Example of Amend to Disclaim
11
Limit Drawings to Design Elements
 Remove technical details before filing
12
Patentability
Novelty
 Average Observer Test: Will the average observer take the new design
for a different design, and not a modified, already-existing design?
Obviousness
 Graham factual inquiries
 All claim limitations (design features) must be taught or suggested by the
prior art
 Standard is whether the new design would have been obvious to a
designer of ordinary skill
13
Patentability
 Study conducted by Prof Crouch in 2010 showed that only 1.2% of design
patent applications received a prior art rejection
(http://www.patentlyo.com/patent/2010/01/design-patent-rejections.html)
 Some say difficult it is to invalidate a design patent under law; Vanguard
Identification Systems v. Kappos, 407 Fed. Appx. 479 (Fed. Cir. 2011), Federal Circuit
upheld validity of design patent in view of close prior art:
14
Developments in the field of GUIs
 Smartphones
 Tablet PCs
 Apps
 PC Software
15
Design protection available for GUIs?
 “Article of manufacture“ requirement
35 U.S.C. 171. Patents for designs. Whoever invents any new, original,
and ornamental design for an article of manufacture may obtain a
patent
 Is a GUI an “article of manufacture“?
1504.01(a) Manual Of Patent Examining Procedure The USPTO
considers designs for computer-generated icons embodied in articles of
manufacture to be statutory subject matter eligible for design patent
protection… Thus, if an application claims a computer-generated icon
shown on a computer screen… or a portion thereof, the claim complies
with the “article of manufacture” requirement…
16
How to meet “article of manufacture“ requirement?
 How is “embodiment in article of manufacture“ shown?
1504.01(a) Manual Of Patent Examining Procedure
If the drawing does not depict a computer-generated icon embodied in
a computer screen… or a portion thereof, in either solid or broken lines,
reject the claimed design… for failing to comply with the article of
manufacture requirement.
17
On-screen keyboard
18
On-screen keyboard
19
Slide to unlock
20
Slide to unlock
21
Cover Flow
22
Cover Flow
23
Cover Flow
24
Cover Flow
25
Cover Flow
26
Cover Flow
27
Cover Flow
28
Cover Flow
29
Cover Flow
30
Recommendations
 Make sure drawings are sufficient
 Limit drawings to design elements
 Disclaim environmental aspects (not part of the claimed design)
 Avoid marks, photographs (which are limiting)
 Many US design patents are of unnecessarily limited scope
 Design patents can add significant value to an IP portfolio
31
Design Patent Cases Filed in District Courts
Source: “Design Patent Suits Becoming Less Prevalent in U.S. Courts,” Corporate Counsel
32
Infringement Test
 Supreme Court declared that there was infringement, “if the eye of an
ordinary observer, giving such attention as a purchaser usually gives, two
designs are substantially the same.”


Rejected that design patent infringement should be decided through the eyes of a expert,
leaving the decision to the “ordinary observer”
Rejected that design patent infringement required exactitude, leaving the test to requiring
“substantial” identity in appearance
33
Infringement Test
 2008 Federal Circuit in Egyptian Goddess v. Swisa



Affirmed that the “ordinary observer” test was the only test for determining design patent
infringement
Rejected “point of novelty” test
But held that the test should be conducted “in view of the prior art.”
 Overall features

“The overall features of … the accused products must be compared with the patented design as
a whole as depicted in all of the drawing figures to determine infringement.”
34
Claim Construction
 2008 Federal Circuit in Egyptian Goddess v. Swisa
 Claim Construction Is Required
 “trial courts have a duty to conduct claim
construction in design patent cases”
 Not Clear When and How To Do It
 District Court Discretion
35
Claim Construction
 District Court Construction Egyptian Goddess

“A hollow tubular frame of generally square cross section, where the
square has sides of length S, the frame has a length of approximately
3S, and the frame has a thickness of approximately T = 0.1S; the
corners of the cross section are rounded, with the outer corner of the
cross section rounded on a 90 degree radius of approximately 1.25T,
and the inner corner of the cross section rounded on a 90 degree
radius of approximately 0.25T; and with rectangular abrasive pads of
thickness T affixed to three of the sides of the frame, covering the flat
portion of the sides while leaving the curved radius uncovered, with
the fourth side of the frame bare.”
36
Claim Construction
 Discretion—But—Watch Out for Detailed Verbal
Descriptions

“it is important to emphasize that a district court's decision regarding
the level of detail to be used in describing the claimed design is a
matter within the court's discretion, and absent a showing of
prejudice, the court's decision to issue a relatively detailed claim
construction will not be reversible error . . . . We therefore leave the
question of verbal characterization of the claimed designs to the
discretion of trial judges, with the proviso that as a general matter,
those courts should not treat the process of claim construction as
requiring a detailed verbal description of the claimed design, as would
typically be true in the case of utility patents.”
37
Claim Construction
 Some Suggestions for District Courts

“While it may be unwise to attempt a full description of the claimed
design, a court may find it helpful to point out . . . various features of
the claimed design as they relate to the accused design and the prior
art . . . . [A] trial court can usefully guide the finder of fact by
addressing a number of other issues that bear on the scope of the
claim. Those include … assessing and describing the effect of any
representations that may have been made in the course of the
prosecution history; and distinguishing between those features of the
claimed design that are ornamental and those that are purely
functional..”
38
Example
 Great Neck Saw Manufacturers, Inc. v. Star Asia U.S.A. LLC
Patent
Prior Art
Accused
39
Example
 Crocs v. ITC
Patent
Prior Art
Not referenced in
CAFC Decision
Accused
40
Example
 Crocs v. ITC
Patent
Prior Art
Not referenced in
CAFC Decision
Accused
41
Example
 Wing Shing Products Co. Ltd. v. Sunbeam Products, Inc.
Patent
Prior Art
Accused
42
Example
 Victor Stanley v. Creative Pipe (Accused Product 1)
Patent
Prior Art
Accused
43
Example
 Victor Stanley v. Creative Pipe (Accused Product 2)
Patent
Prior Art
Accused
44
Example
 Egyptian Goddess v. Swisa
Patent
Prior Art
Accused
45
Example
 Richardson v Stanley Works
Patent
Prior Art
Accused
46
Apple v. Samsung
Apple Patent
Prior Art
Accused
47
Apple v. Samsung
Apple Patent
Prior Art
Accused
48
Apple v. Samsung
Apple Patent
Prior Art
Accused
49
Apple v. Samsung
Apple Patent
Prior Art
Accused
50
Apple v. Samsung
Apple Patent
Prior Art
Accused
51
Apple v. Samsung
Apple Patent
Prior Art
Accused
52
Apple v. Samsung Claim Construction
July 27, 2012 Claim Construction Order
53
Apple v. Samsung Infringement (D677)
Amended August 24, 2012 Jury Verdict
54
Apple v. Samsung Infringement (D087)
Amended August 24, 2012 Jury Verdict
55
Apple v. Samsung Infringement (D305)
Amended August 24, 2012 Jury Verdict
56
Apple v. Samsung Infringement (D889)
Amended August 24, 2012 Jury Verdict
57
Apple v. Samsung Infringement (D889)
Amended August 24, 2012 Jury Verdict
58
Apple v. Samsung Validity
August 24, 2012 Jury Verdict
59
Thank You