1. Renaissance of U.S. Design Patents Steven M. Gruskin (sgruskin@sughrue.com) Sughrue Mion, PLLC Washington, D.C. PLI Seminar, New York City January 31, 2014

2. Design Patents in the U.S. Why the Renaissance for Design Patents? – High Profile Decisions Crocs v. ITC (2011) Apple v. Samsung (2012) – Easier to prove infringement standard Egyptian Goddess, Inc. v. Swisa, Inc. (2008) – More Difficult to Invalidate High Point Design, LLC. v. Buyers Direct, Inc. (2013)

3. Design Patents in the U.S. (cont.) Why the Renaissance for Design Patents? (cont.) – Heighted Scrutiny of Utility Patents Easier to Invalidate (KSR) Damages (no more 25% Rule)

4. Securing Design Patent Rights A design patent may be awarded for any "new, original and ornamental design for an article of manufacture." 35 USC §173 Design v. Utility Patents – U.S. Patent Office awards utility patents for how a product functions, and awards design patents for how a product looks

5. Securing Design Patent Rights Content of a Design Patent Application: – Drawings – A single claim (subject matter claimed in solid lines, with unclaimed subject matter reduced to broken lines)

6. Securing Design Patent Rights A design patent may be awarded for any "new, original and ornamental design for an article of manufacture." 35 USC §173 – No requirement to claim the entire "article of manufacture"

7. Watch Design Example Watch Company has developed a new design for a watch as shown, and wants to protect the design in the marketplace.

8. Watch Design Example Option 1: Protect watch as a whole (the watch showing the watch band, the face and the clasp) Option 2: Protect a portion of watch (just the watch face with guitar pick and musical notes on the watch face) Option 3: Protect the design or ornamentation on the watch (just the guitar pick on the watch face) Ornamentation (guitar pick) would be shown in solid lines & watch face would be reduced to broken lines (not part of claimed design)

9. Watch Design Example

10. Securing Design Patent Rights A design patent protects the nonfunctional or ornamental aspects of a product – most objects have at least some ornamental aspects and can be protected

11. Design Patent Infringement Ordinary Observer Test – Gorham Mfg. Co. v. White, 81 US 511 (1871) ordinary observer would be deceived into purchasing the accused product believing it to be the patented product

12. Design Patent Infringement "Dark Ages" of Design Patent – "Design patents have almost no scope" In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) – "Point of Novelty Test" Patentee also had to show accused products appropriated the points of novelty that distinguished patented design from prior art

13. Design Patent Infringement Federal Circuit eliminated "Point of Novelty" Test in Egyptian Goddess, Inc. v. Swisa – Ordinary Observer Test is the sole infringement test (but still consider prior art)" "whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design"

14. Crocs v. ITC Crocs sued eleven companies in the ITC ITC based on 6,993,858 and D517,789 Crocs requested a General Exclusion Order from ITC to prevent importation of all infringing shoes (including non-parties)

15. Crocs' Design Patents D517,789

16. Alleged Infringing Products

17. Infringement Analysis Not Infringed* *Many of the other accused companies were found to infringe on appeal

18. Infringement Analysis

19. Crocs v. ITC ITC initially found Crocs' patents not infringed Crocs appealed and CAFC overturned the ITC Findings and Remanded – ITC used a verbal claim construction and CAFC ruled the claim scope is "the design as shown in Figures 1-7" not written description of the drawings – ITC ultimately found infringement and issued a General Exclusion Order in 2011

20. Apple v. Samsung

21. Jury Award: $1.05 Billion – Largely "total profits" under 35 USC §289 Additional remedy for design patent infringement- total profit of the patented article Samsung found to infringe 3 Design Patents – D618,677 (front face surface of screen) – D593,087 (rounded corners) – D604,305 (user interface)

22. Apple's Design Patents D618,677D593,087 D604,305

23. Samsung's Products Source: www.engadget.com Galaxy S 4G Infuse 4G

24. Infringement Analysis Galaxy S 4G Infuse 4G D618,677 Source: www.engadget.com Infringed

25. Infringement Analysis Galaxy S IID593,087 Source: www.engadget.com Not Infringed* *Galaxy S II was found to infringe the '677 patent

26. THANK YOU QUESTIONS?