Recent Blog Posts
Columbia Sportswear Appeal Decision Covers Design Infringement; No Reflection on Damages
Last week, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion in Columbia Sportswear v. Seirus Innovative Accessories (No. 2018-1329, 2018-1331 and 2018-1728) (Nov. 13, 2019). Although many interested stakeholders in the design patent world had hoped for some guidance on the “article of manufacture” issue as it relates to the calculation of a design patent infringer’s total profits, the CAFC did not reach the question of damages. Instead, the CAFC focused on the finding of infringement. More
I burn, burn like a wicker chair; chalk white and oh-so frail…
The title above refers to a lyric from a 1998 song by Eve 6, although they used the word “cabinet” instead of “chair.” While this simple substitution of a word on my part is designed to evoke an image, the choice of words and the image evoked* can mean so much more in the world of design patents.
Yesterday, in Curver Luxembourg v. Home Expressions (Fed. Cir. Appeal No. 18-2214), the U.S. Court of Appeals for the Federal Circuit affirmed a District Court of New Jersey decision against plaintiff-appellant Curver Luxembourg. Curver sued Home Expressions for infringement of U.S. Design Patent No. D677,946, asserting that Home “makes and sells a basket that is identical to Curver’s basket in every way, including incorporating the patented overlapping “Y” design.” Home countered that its baskets could not possibly infringe Curver’s design patent, because the patent claim was limited to a chair. The district court agreed and dismissed the case, reasoning that Curver’s “original application was for a design on furniture. And what Curver got, as opposed to what it asked for, was a patent that protects against infringement for a particular “Y” design on chairs only.” Here, “in a case of first impression,” the Federal Circuit also agreed, holding that the scope of Curver’s U.S. design patent was limited to “an ornamental design for a pattern for a chair,” such that it did not read on Home’s baskets. More
Design Day 2019
The U.S. Patent and Trademark Office (USPTO) held its 13th annual Design Day on April 25, 2019.
Hosted by Lakiya Rogers (SPE TC 2900) and Elizabeth Ferrill (Finnegan), Design Day 2019 began with introdutory comments from Drew Hirshfeld, Commission for Patents.
Following Commissioner Hirshfeld, Karen Young (Director for TC 2900) discussed the state of TC2900, including various design patent-related statistics for TC 2900. Among other information, Director Young indicated that TC 2900 would be adding more examiners, including both Supervisory Patent Examiners (SPEs) and junior patent examiners.
David Gerk, Attorney-Advisor Office of Policy, then presented on the topic of "Beyond the USPTO: Design Developments Across the Globe." Mr. Gerk's presentation touched on changes in international design practice, including changes in grace period in Japan (now twelve months), Singapore's new design protections, partial designs in China, and availability regarding Digital Access Service (DAS) for priority documents.
The Canadian Intellectual Property Office (CIPO)'s Todd Hunter, Director of Copyright and Industrial Design Branch, followed Mr. Gerk to discuss design-related views from Canada's perspective. Notably, Mr. Hunter highlighted Canada’s shift from 10 years to 15 years of design patent protection.
The next presenter discussed a number of recent Federal Circuit decisions involving design patents, probably most notably In re Maatita. This presentation was followed by William LaMarca, Senior Counsel for Intellectual Property with the Office of the Solicitor, who was the USPTO's lead counsel for In re Maatita. Mr. LaMarca shared his personal account and insight of the In re Maatita case.
Kate Eary of Gentex Corporation presented next. She discussed Gentex's 125-year history and the importance design has played in product evolution.
Following lunch, Sarah Brooks from IMB Corp. provided an overview of the design culture at IBM and the impressive returns on their new design program. Ms. Brooks shared helpful lessons that she learned from implementing their design program.More
Next, Dana Weiland, an Examiner in Art Unit 2919, provided her helpful perspective on searching an examining design patent applications. This presentation included a overview of classifying new applications, a behind the scenes look at an Examiner’s docket, and the steps of a sample examination. Examiner Weiland noted that design Examiners have a flip rate of less than 0.5 seconds when reviewing prior art references, which is very impressive.
Jenae Gureff then provided a report on several recent PTAB decisions. Interestingly, the decisions presented included inter partes reviews (IPR), a post-grant review (PGR), and an ex parte reexam.
Next, the Honorable Jill Hill, an Administrative Patent Judge at the Patent Trial and Appeal Board provided a view from the bench. Judge Hill’s presentation explained the options and procedures available to applicants. Judge Hill also provided some comments regarding effective briefing in design cases, which we found to be very helpful.
After a brief break, a panel of in-house counsel provided an overview of design patent portfolio management. The panelist represented Hubbell Incorporated, Eli Lily and Company, and Husqvarna Group and gave an overview of their respective organization, including how invention disclosures and inventor interaction worked.
The final presentation of the day was an overview four recent district court decisions involving design patents. The products involved in these district court cases included a wine rack, chalk holders, vehicle wheels, and promotional vehicles, again demonstrating that design patents can be a useful tool for protecting IP rights in many different types of inventions.
Design Day continues to be a well-attended, well run event that is helpful to Examiners and practitioners alike. Design Day has historically be held at the end of every April so mark your calendars for next year. However, be sure to register early as this popular event is sure to fill up quickly.
“Cover Up What You Don’t Want to See”: Advantek Marketing v. Shanghai Walk-Long Tools (Fed. Cir., Aug. 1, 2018)
Advantek obtained U.S. Design Patent No. D715,006 (“D ’006”) on a “gazebo” without a cover, the gazebo essentially being a portable kennel. Figs. 1 and 2 from D ’006 are reproduced below.
During prosecution of the application that later became D ’006, the Examiner issued a Restriction Requirement. The Requirement split the application into two groups: a gazebo without a cover, and a gazebo with a cover. According to the Examiner, the “designs as grouped are distinct from each other….” Despite disagreeing with the Requirement, Advantek elected to prosecute the “gazebo without a cover” (as shown above) and cancelled a drawing that showed the gazebo with a cover. After further prosecution to overcome formalities objections and § 112 rejections, the D ’006 patent issued.
When the Underdog Becomes a Top Dog
Almost 16 years ago, we wrote an article in Managing Intellectual Property (Nov. 2002, Issue 124) entitled U.S. DESIGN PATENTS: AN UNDERDOG THAT BITES. The article explained that companies had previously overlooked design patents, focusing instead on trade dress protection and utility patents. Yet, design patents provide their owners with the additional option of demanding the infringer's total profits under 35 USC 289. “This option may be advantageous, for example, when the infringer's total profits are substantially greater than any reasonable royalty.” “Companies are starting to appreciate the value of design patent protection and systematically consider whether their inventions deserve such protection.” Apple was such a company. More