1. 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)

2. 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

3. 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

4. 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?

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

6. 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
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Design Law 2018

7. 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
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Design Law 2018

8. 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
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Design Law 2018

9. 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)
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Design Law 2018

10. 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 (II).
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Design Law 2018

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

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

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

14. 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.
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Design Law 2018

15. Restriction Practice in Designs
Prior art reference shows:
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Design Law 2018

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

17. 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)
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Design Law 2018

18. 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

19. Same Scope - Similar Concepts

20. Similar Concepts but bigger differences

21. Similar Concepts but bigger differences

22. Scope-based Differences

23. The more you have……

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

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

26. 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.

27. 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.

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

29. 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.

30. 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

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

32. 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

33. 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

34. Panel III
Questions?
#designlaw18

35. Please join the reception in the balcony area, just one floor up.
Closing & Reception
Please join the reception in the balcony area, just one floor up.

36. Thank you!