US DESIGN PATENT LAW UPDATE John T. Johnson, Esq. January 29, 2013 Tampa, Florida AIPLA 1

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 2

Examples of Protectable Designs Overall product designs Partial designs and ornamentation Packaging Patterns Fonts Icons 3

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 4

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 5

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 6

Example of Multiple Embodiments 7 Protect the idea in its various expressions May have to argue against restriction (or file multiple applications)

Example of Multiple Embodiments 8

Example of Amend to Disclaim 9 Show non-critical features only in dashed line

Example of Amend to Disclaim 10

Limit Drawings to Design Elements 11 Remove technical details before filing

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 12

Patentability 13 Study conducted by Prof Crouch in 2010 showed that only 1.2% of design patent applications received a prior art rejection ( Some say difficult it is to invalidate a design patent under law; V anguard Identification Systems v. Kappos, 407 Fed. Appx. 479 (Fed. Cir. 2011), Federal Circuit upheld validity of design patent in view of close prior art:

Developments in the field of GUIs Smartphones Tablet PCs Apps PC Software 14

Design protection available for GUIs? “Article of manufacture“ requirement 35 U.S.C 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“? (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… 15

How to meet “article of manufacture“ requirement? How is “embodiment in article of manufacture“ shown? (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. 16

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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 30

Design Patent Cases Filed in District Courts 31 Source: “Design Patent Suits Becoming Less Prevalent in U.S. Courts,” Corporate Counsel

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 32

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.” 33

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 34

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.” 35

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.” 36

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..” 37

Example Great Neck Saw Manufacturers, Inc. v. Star Asia U.S.A. LLC 38 PatentPrior ArtAccused

Example Crocs v. ITC 39 PatentPrior ArtAccused Not referenced in CAFC Decision

Example Crocs v. ITC 40 PatentPrior ArtAccused Not referenced in CAFC Decision

Example Wing Shing Products Co. Ltd. v. Sunbeam Products, Inc. 41 PatentPrior ArtAccused

Example Victor Stanley v. Creative Pipe (Accused Product 1) 42 PatentPrior ArtAccused

Example Victor Stanley v. Creative Pipe (Accused Product 2) 43 PatentPrior ArtAccused

PatentPrior ArtAccused Example Egyptian Goddess v. Swisa 44

PatentPrior ArtAccused Example Richardson v Stanley Works 45

Apple PatentPrior ArtAccused Apple v. Samsung 46

Apple PatentPrior ArtAccused Apple v. Samsung 47

Apple PatentPrior ArtAccused Apple v. Samsung 48

Apple PatentPrior ArtAccused Apple v. Samsung 49

Apple PatentPrior ArtAccused Apple v. Samsung 50

Apple PatentPrior ArtAccused Apple v. Samsung 51

52 Apple v. Samsung Claim Construction July 27, 2012 Claim Construction Order

Apple v. Samsung Infringement (D677) 53 Amended August 24, 2012 Jury Verdict

Apple v. Samsung Infringement (D087) 54 Amended August 24, 2012 Jury Verdict

Apple v. Samsung Infringement (D305) 55 Amended August 24, 2012 Jury Verdict

Apple v. Samsung Infringement (D889) 56 Amended August 24, 2012 Jury Verdict

Apple v. Samsung Infringement (D889) 57 Amended August 24, 2012 Jury Verdict

Apple v. Samsung Validity 58 August 24, 2012 Jury Verdict

Thank You 59