1. Mobile Devices

2. Elisabeth Fink Boards of Appeal, OHIM Patrice de Candé General Partner of de Candé-Blanchard Chris Carani McAndrews, Held & Malloy Ltd. Chair: Darren Smyth Partner in Charge, EIP Elements Practice Group

3. Designs for Mobile Devices US Perspective Chris Carani McAndrews, Held & Malloy Ltd.

4. Outline of Today’s Discussion 1.Dotted Lines 2.Design Corpus (i.e. Prior Art) and Infringement 3.Nature of the Product 4.Features Dictated by Technical Function

5. General Rule (U.S.) “Solid lines” are part of claim design.” “Dotted lines” are NOT part of claimed design.”

6. Dotted Lines Microsoft Webcam, US Patent D647,937 Mount is not part of claimed design

7. Dotted Lines Microsoft Webcam, US Patent D647,937

8. US D647,933 “ELECTRONIC CAMERA” US D647,946 “SUPPORT FOR ELECTRONIC CAMERA” Multiple Applications

9. Dotted Lines and Continuation Practice D548,744 (entire device) D573,223 (screen, no click wheel) D562,847 (no screen, click wheel)

10. Dotted Lines and Continuation Practice Filing 8/24/05 Filing 3/22/07 Issuance D548,744 Issuance D573,606 Filing 05/08/07 Abandoned Filing 2/13/09 Issuance D650,355 Filing 08/10/11 Issuance D656,159 Etc.

11. Apple’s US D593,087 has 6 Embodiments Apple D‘087 Embodiment 5 Apple D‘087 Embodiment 6 Apple D‘087 Embodiment 4 Apple D‘087 Embodiment 3 Apple D‘087 Embodiment 2 Apple D‘087 Embodiment 1 EmbodimentSpeakerScreen BorderHome Button 1Unclaimed Claimed 2UnclaimedClaimedUnclaimed 3ClaimedUnclaimed 4 Claimed 5 UnclaimedClaimed 6 Unclaimed

12. Importance of Dotted Lines Apple’s ‘087 Design Samsung’s Accused Galaxy 4 S 564321 Claimed Not present

13. Apple’s US D593,087

15. Importance of Dotted Lines Apple’s ‘087 Design Samsung’s Accused Galaxy 4 S Disclaimed

16. Design Corpus and Design Patent Infringement Set the way back machine… Gorham v White (1871)

17. Gorham v. White (1871)

18. If…“in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

19. Egyptian Goddess, Inc. v. Swisa, Inc. (2008) 1.“Is the overall appearance of the claimed patented design 2.substantially the same as 3.the overall appearance of the accused design 4.in view of the prior art?” Eye of an Ordinary Observer:

20. Gorham v. White (1871)

22. INFRINGEMENT

23. Gorham v. White (1871) Prior Art

24. Gorham v. White (1871) Prior Art NON-INFRINGEMENT

25. Nature of the Product US D513,395 Title: Automobile Body Accused Product Automobile

26. Nature of the Product US D513,395 Title: Automobile Body Accused Product Go-Cart or UTV

27. Nature of the Product US D513,395 Title: Automobile Body Accused Product Child’s Toy

28. Nature of the Product US D593,087 Title: Smartphone Accused Product Child’s Toy

29. Two Distinct Functionality Concepts: (1) Validity and (2) Scope of Protection Concept 1 Validity – Overall Appearance of Claimed Design. Concept 2 Scope of Protection – Appearance of Individual Features.

30. Concept 1: Functionality - Validity Validity Question: Is Appearance of Overall Claimed Design Dictated by Function? Patented Design 1Patented Design 2 Patented Design 3

31. Concept 2: Functionality – Scope of Protection Scope of Protection Question : Is Appearance of Claimed Design Feature Dictated by Function? Patented Design Accused Design

32. 32 ‘167 Patented Design Accused Design Prior Art Richardson v. Stanley Works, Inc. (2010)

33. 33 Claim Construction – as a Matter of Law “Richardson's multi-function tool comprises several elements that are driven purely by utility. As the district court noted, elements such as the handle, the hammer-head, the jaw, and the crowbar are dictated by their functional purpose.” 2 4 1 3 hammer-head jaw handle crow-bar

34. 34 Claim Construction “Discount,” “Ignore,” “Factor out,” these features.

35. 35 1 3 4 2 hammer-head jaw handle crow-bar

36. 36 1 3 4 2 hammer-head jaw handle crow-bar

37. 37 1 4 3 2 hammer-head jaw handle crow-bar

38. 38 1 3 4 2 hammer-head jaw handle crow-bar

39. Claim Construction = Claim Destruction

40. Functionality – Scope of Protection Scope of Protection: Are there any features “dictated by function”?

41. Questions