Panel III: Is one enough. Is two too many Panel III: Is one enough? Is two too many?: Claiming more than one embodiment (scope and estoppel issues in prosecution and enforcement)

Panelists Moderator Robert Katz Chris Carani Tracy-Gene G. Durkin Banner & Witcoff Chris Carani Partner McAndrews, Held & Malloy Tracy-Gene G. Durkin Director Sterne, Kessler, Goldstein & Fox Katie Maksym Patent Administrator Columbia Sportswear Company Joel Sincavage Design Practice Specialist USPTO

Overview Conflict USPTO Restriction Practice more embodiments vs. potentially getting better design rights USPTO Restriction Practice Prosecution History Estoppel Challenges in determining scope Validity and infringement Other issues

In re Rubinfield 270 F.2d 391 (CCPA 1959) A single claim It may be permissible to present multiple embodiments if they involve a single inventive concept But should you?

USPTO Restriction Practice in Designs Joel Sincavage Design Practice Specialist October 24, 2018 Design Law 2018

Restriction Practice in Designs The Statute: If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. 35 U.S.C. 121 The Rule: More than one claim is neither required nor permitted. 37 CFR 1.153 10/24/2018 Design Law 2018

Restriction Practice in Designs In a design application, patentably distinct designs must be identified. Restriction will be required if a design patent application claims multiple designs that are patentably distinct from each other. See MPEP 1504.05. 10/24/2018 Design Law 2018

Restriction Practice in Designs Distinct Inventions More than one embodiment of a design may be protected by a single claim only if such embodiments involve a single inventive concept according to the nonstatutory double patenting practice for designs. See MPEP 1504.05. 10/24/2018 Design Law 2018

Restriction Practice in Designs Distinct Inventions Restriction practice based in case law: "... when similar designs or embodiments are presented by an inventor in separate applications, the Patent Office does not leave the determination as to whether they are distinct inventions to the courts, but, if it finds only one inventive concept to be involved, allows a patent on one application and rejects the others on the ground of double patenting. It is not apparent, therefore, why that office should refuse to undertake a similar determination when different embodiments are presented in a single application." In re Rubinfield, 123 USPQ 210 (CCPA 1959) 10/24/2018 Design Law 2018

Restriction Practice in Designs Distinct Inventions The standard of obviousness-type double patenting: Designs are not distinct inventions if: (A) the multiple designs have overall appearances with basically the same design characteristics; and (B) the differences between the multiple designs are insufficient to patentably distinguish one design from the other (i.e., they are de minimis or obvious to a designer of ordinary skill in the art). See MPEP 1504.05 (II). 10/24/2018 Design Law 2018

Restriction Practice in Designs Distinct Inventions Restriction Required Distinct because the designs of the articles have overall appearances that are not basically the same. 10/24/2018 Design Law 2018

Restriction Practice in Designs Distinct Inventions Restriction Required Distinct because the scopes of the designs result in appearances that are not basically the same. 10/24/2018 Design Law 2018

Restriction Practice in Designs Distinct Inventions Restriction Required Overall appearances basically the same but the differences are not obvious. 10/24/2018 Design Law 2018

Restriction Practice in Designs Indistinct Inventions No Restriction Required Overall appearances are basically the same and the differences are obvious in view of prior art. 10/24/2018 Design Law 2018

Restriction Practice in Designs Prior art reference shows: 10/24/2018 Design Law 2018

Restriction Practice in Designs Prior art reference teaches obviousness. Embodiment Two Prior Art Embodiment One = i.v.o. 10/24/2018 Design Law 2018

Restriction Practice in Designs Indistinct Inventions No Restriction Required Indistinct because the overall appearances are basically the same and the differences are de minimis and obvious in view of case law.* * Exact proportioning is a matter involving ordinary skill only. In re Stevens, 81 USPQ 362 (CCPA 1949) 10/24/2018 Design Law 2018

Restriction Practice in Designs Indistinct Inventions No Restriction Required Indistinct because the overall appearances are basically the same and the differences are de minimis and obvious to a designer of ordinary skill in the art. 10/24/2018 Design Law 2018

Same Scope - Similar Concepts

Similar Concepts but bigger differences

Similar Concepts but bigger differences

Scope-based Differences

The more you have……

Pacific Coast Marine v. Malibu 12-CV-0033 (Fed. Cir. 2014) Embodiment 1 Restriction Requirement Embodiment 2 D412,086 24 24

Pacific Coast Marine v. Malibu 12-CV-0033 (Fed. Cir. 2014) elected D412,086 non- elected NON-INFRINGEMENT 25 25

Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., Ltd. During prosecution, Examiner restricted into two embodiments: Figs. 1-4 (kennel w/cover) Figs. 1-5 (kennel w/o cover) In response, Applicant cancels Fig. 5 and amends Figures 1-4 (as shown here) Patent eventually issues © 2018 Dunstan H. Barnes. All rights reserved.

Advantek Marketing v. Shanghai Walk-Long Tools Federal Circuit opinion – Aug. 1, 2018 District court finds prosecution history estoppel applies Federal Circuit holds that prosecution history estoppel does not apply here PHE test from Pacific Coast Marine Windshields: (1) whether there was a surrender of claim scope; (2) whether it was for reasons of patentability; and (3) whether the accused design is within the scope of the surrender Federal Circuit holds that regardless of whether there was a surrender, the accused product falls outside the scope of the purported surrender Extra features, such as a cover, don’t take the accused product outside the scope of the patented design Remanded for further proceedings © 2018 Dunstan H. Barnes. All rights reserved.

Combination TRUCOOK, L.L.C., v BOND/HELMAN (ND IL 2001)

Combination TRUCOOK, L.L.C., v BOND/HELMAN (ND IL 2001) The single claim of the ‘705 patent is directed to the design for a meat thermometer and utensil. Visually, the device resembles a large meat fork consisting of: (1) a rectangular handle with rounded edges exhibiting a temperature indicator on the top side of the handle, a separate end-cap on one end, and a protruding rectangular flange perpendicular to the handle on the opposite end, with the handle tapering as it approaches the flange; (2) an elongated rectangular fork neck, extending from the flange, that is narrower in width than the handle when viewed from the top and substantially thinner than the handle when viewed from the side; and (3) a fork head that, when viewed from the side, is the same thickness as the fork neck and angles downward from the fork neck to a vertex from which two fork tines project forward and angle upward, with the two fork tines extending more than half-way up the fork head, tapering to a point, and with an arc between the tines near the vertex.

Multiple Embodiments (scope-based) Same base drawing, different scope US D593,087 Apple D‘087 Embodiment 5 Embodiment 6 Embodiment 4 Embodiment 3 Embodiment 2 Embodiment 1 Embodiment Speaker Screen Border Home Button 1 Unclaimed Claimed 2 3 4 5 6 30 30

Vanguard Identification v. Kappos (Fed. Cir. 2011) 5 Embodiments

Vanguard Identification v. Bank of America (Fed. Cir. 2011) BPAI reversed the Examiner’s obviousness rejection in Ex Parte Reexamination Prior art applied did not have a proper Rosen reference because none had a hole CAFC affirmed without opinion

Other Issues Traversing or changing election Enforcement Certainty versus uncertainty re scope How do you prove infringement/invalidate Enforcement cost differential The Great Neck defensive argument Can you invalidate if it contains patentably distinct designs? Legal advice

Panel III Questions? #designlaw18

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