SIGNIFICANT PENDING DESIGN PATENT APPEAL: RANGE OF MOTION v. ARMAID

In a design patent case that’s been pending for quite a while, and which has been fully briefed and argued, the patentee Range of Motion Products, LLC (“RoM”) is asking the Federal Circuit to reverse the district court’s summary judgment order that its patent (D802,155) is not infringed by the defendant Armaid Company, Inc. (Federal Circuit case no. 23-2427).  The D‘155 patent is for a “Body Massaging Apparatus”, a perspective and side view of which are shown below:

Although there are several issues in the case, I’m going to focus on two.  First, claim construction including the treatment of “functional” (more properly called “utilitarian”) features, and second, the court’s finding of non-infringement.

In an earlier blog, I discussed the district court’s denial of RoM’s motion for a preliminary injunction, which was based on some of the same issues in this appeal.

Here are illustrations of the patented and accused designs side by side:

The Federal Circuit in Egyptian Goddess, in discussing claim construction, preached the virtue of non-verbal construction of design patent claims, i.e., a preferred claim construction would be “The ornamental design of a gizmo, as shown and described.”  However, the Court also said that a court could also distinguish “between those features of the claimed design that are ornamental and those that are purely functional”.    

This led to a series of cases where courts tried to separate ornamental and “purely functional” features.  Of course, there is no such thing as a “purely” functional feature.  The Federal Circuit tried to lay this impossible task to rest in the 2015 and 2016 cases of Ethicon v. Covidien and Sport Dimension v. Coleman. But some courts refused to get the message.

In its argument, RoM quite properly noted that “all utilitarian features have an associated appearance and that appearance can be claimed in a design patent.” 

That sentence – which is absolutely true - should eliminate 95% of the “functional/ornamental” problems in design patent claim construction.  In other words, if all utilitarian features have an appearance that can be properly part of a design patent claim, and the non-utilitarian, i.e., ornamental features can also (obviously) be properly claimed, then nearly every design patent claim construction can simply be what the Court recommended in Egyptian: “The ornamental design of a gizmo, as shown and described.” 

Nothing more need be said.

This analysis is supported by my paper: “A Primer on Design Patent Functionality”, 36 Berkeley Technology Law Journal 47 (2021). 

RoM on appeal argued that the district court, among other things, improperly eliminated the appearance of entire structural features illustrated in the drawings, which ignores the Federal Circuit’s precedent in its 2015 and 2016 decisions in Ethicon and Sport Dimension.

The lower court construed the ‘155 patent claim as follows:

“The ornamental design for a body massaging apparatus, as shown and described in Figs. 1-8, except the base and the two arms, which are functional and not ornamental.” (emphasis added).

RoM quite properly noted that a very similar claim construction was rejected in the Sport Dimension case which the Federal Circuit reversed on essentially the same basis.  To wit, the claim construction in Sport Dimension was:

“[t]he ornamental design for a personal flotation device, as shown and described in Figs. 1-8, except the left and right armband, and the side torso tapering, which are functional and not ornamental.” Sport Dimension at 1321. (emphasis added).

The Federal Circuit in Sport Dimension held that “the elimination of these functional elements [from] “the ultimate claim construction…runs contrary to our law”.

The Court in Sport Dimension also noted that the district court had relied on PHG v. St. John Cos. that set forth four factors to be considered in determining functionality. By the way, the only precedent in PHG for these four factors was the Berry Sterling case that set forth these factors in dicta at the end of its opinion. These factors, as I have also pointed out in previous papers, are curiously akin to the factors that are considered in trade dress analysis, suggesting poor legal research on the part of whoever wrote the Berry Sterling opinion, since the underpinning of trade dress functionality is distinctly different from functionality of design patents.

The PHG factors were indeed discussed in Sport Dimension, and the Court in that case agreed with the lower court’s analysis of same.  But, significantly the Court in Sport Dimension went on to say: 

“Nonetheless, even though we agree that certain elements of Coleman’s design serve a useful purpose, we reject the district court’s ultimate claim construction.  As in Ethicon, the district court’s claim construction fails to account for the particular ornamentation of the claimed design…”

In RoM, the district court nevertheless analyzed the claimed design using the PHG factors, and concluded: “[I]t is evident that many of the [claimed design’s] individual features  have a functional purpose and, thus, are beyond the scope of the claim in the D’155 patent.”

Ignoring Sport Dimension and Ethicon, the district court then said that it would be “impossible” to discuss which features of a design patent are driven by functional considerations “if every feature depicted in solid lines in design patents were per se ornamental”. 

It appears that the court’s claim construction was way off.

INFRINGEMENT

The court went on to compare images of the D’155 patent to the accused product and the closest prior art:

The court once again ignored the appearance of certain utilitarian features, saying:  “These functional features are not protected by the D’155 patent  and, therefore, do not bear on the ordinary-observer test.”

After noting several differences between the two designs (there are always differences between a patented and accused design, without which the case would not be in court) the court found them “plainly dissimilar” (a/k/a “sufficiently distinct”).  I have ranted and raved about the impropriety of the “plainly dissimilar” test as obviously subjective in determining infringement. See my earlier blog post on the subject.

The district court nevertheless proceeded to compare the patented design, accused design, and the prior art.  In doing so, it basically repeated its analysis under the “plainly dissimilar” test, finding a number of differences (which are always present) and once again, concluded that “[T]he D’155 patent and the Armaid2 (accused design) are plainly dissimilar or, at the least, not substantially similar.”

It is quite clear that a jury, consisting of a group of ordinary observers (as found in the Braun v. Dynamics case), could easily conclude that the claimed design and accused product are much more similar to each other than each is to the closest prior art, which would make a finding of infringement more likely than not.

RoM also argued that these disputed issues of fact should have precluded summary judgment, and allowed those issues to be decided by a jury.  The court dismissed RoM’s argument by saying that claim construction, even though having “evidentiary underpinnings, how to construe a claim is a question of law within the exclusive province of the court”.  But, obviously, those “evidentiary underpinnings” were in dispute and should not have been resolved by the court.

I have reviewed the defendant’s brief on appeal and find it non-persuasive, relying in large part on the Federal Circuit’s disastrous opinion in Lanard Toys Limited  v. Dolgencorp LLC, Ja-Ru, Inc., and Toys “R” Us-Delaware, Inc. (see my earlier blog post about that case), and irrelevant portions of the Sport Dimension and Ethicon cases, both of which clearly hold that utilitarian features have an appearance that must be taken into account in claim construction.

Here are RoM’s opening Appeal Brief, Armaid’s Response, and RoM’s Reply.

I wait for the Court’s decision with bated breath.

Meanwhile, you decide.

AMICUS BRIEFS FILED IN FEDERAL CIRCUIT IN SUPPORT OF NORTH STAR’S PETITION FOR REHEARING

Yesterday, July 10, 2025, two amicus curiae briefs were filed in the Court of Appeals for the Federal Circuit supporting North Star’s combined Petition for Rehearing and Rehearing En Banc in North Star Technology International Ltd. et al v. Latham Pool Products, Inc.  The panel decision of April 24, 2025 is here.

The amicus briefs were filed by Robert Oake who was lead counsel for Egyptian Goddess in the seminal Egyptian Goddess v. Swisa case from 2008, decided by the Federal Circuit en banc.  It was that case that first set forth the “sufficiently distinct/plainly dissimilar” language now in contention in the North Star case.  Mr. Oake’s brief is here.

The second brief was filed on behalf of the Institute for Design Science and Public Policy (IDSPP), an independent, non-profit professional organization founded in 2011 to support the integration of design science and design intellectual property rights.  The brief was penned by Damon Neagle, a noted design lawyer.  The IDSPP brief is here along with its Exhibit A.

For background, my previous post sets forth the facts and issues in the case (from my admittedly biased view as North Star’s lead counsel), as well as the district court’s decision on appeal, and links to the parties’ appeal briefs. 

For an in-depth review of the issues, see my paper “Sufficiently Distinct is Insufficient as a Test for Design Patent Infringement”, published recently in Indiana’s law journal IP Theory.

A FEW VERSES TO CAPTURE THE SPIRIT OF NORTH STAR'S PETITION FOR REHEARING

Thanks to co-counsel and poet-in-residence Matt Dowd who has penned the following ditty, embodying the issues in North Star’s Petition:

The Copyist’s Cloak

A shape is drawn, and then refined,
An artist’s vision, well-designed.
A patent granted. Form now shielded,
From theft, or so the law had wielded.

But bound'ries move in legal light,
Where copyists escape that right.
They tweak a curve, adjust a line,
And cry, “This shape is not like thine.”

The court then peers with narrowed frame,
And asks if diff'rence meets the claim—
Are these two forms so far apart,
That John or Janey in the mart

Would see them as the same at glance?
If yes, that ends the patent's chance.
No need to weigh the prior art,
The case ends before a start.

Yet history holds a thousand forms,
Of steps, pools, shapes, and platforms.
Prior art be gone.  The thief will win,
By hiding mimicry within.

For “sufficiently distinct” is vague,
A test that courts too oft misplague.
The mere equivalent can then slide,
While true design is cast aside.

So let us call for clearer rules,
Not tests that serve infringers’ tools.
So let prior art be the game,
To judge "substantially the same."

NORTH STAR FILES PETITION FOR REHEARING AND REHEARING EN BANC IN SIGNIFICANT DESIGN PATENT INFRINGEMENT CASE

A Petition for Rehearing and Rehearing En Banc was filed in the Court of Appeals for the Federal Circuit on June 26, 2025 in North Star v. Latham, in which I am North Star’s lead counsel (assisted by able appellate co-counsel Matt Dowd).  See my previous post discussing the facts of this case.

This case challenges a misbegotten test for assessing design patent infringement.  The "sufficiently distinct" (or "plainly dissimilar") test has been used extensively by district courts to dismiss claims of design patent infringement without any consideration of the prior art.  In the Federal Circuit’s 2008 en banc decision of Egyptian Goddess v. Swisa, the Court spent many pages of its opinion emphasizing the value of considering the prior art, discussing a long line of cases going back 100+ years. For an in-depth review of such cases, see my paper “Sufficiently Distinct is Insufficient as a Test for Design Patent Infringement”, published recently in Indiana’s law journal IP Theory.

After its extensive discussion about the importance of considering the prior art, the Court in Egyptian then introduced the “sufficiently distinct” test in a single sentence, but without citation of any authority. Since then, no court has ever provided any guidance to determine when such a test is appropriate for use in a particular case.

While I believe that the “sufficiently distinct” test was initially intended to allow a court to dispose of easy cases, where non-infringement is clear on its face, the test has become a popular basis for alleged infringers’ motions for summary judgment of non-infringement. It is estimated that since 2008, when Egyptian was decided, fully half of such motions that were granted have been based on the rudderless “significantly distinct” test, which is almost impossible for a patentee to overcome on summary judgment.

Any reasonably close design patent case ought to consider the prior art in assessing infringement.  That comparison provides an objective means, a frame of reference, to compare the designs as a whole.  After all, the Supreme Court in Gorham v. White emphasized that a party that makes a "mere equivalent" of the patented design will infringe.

 Short of excising the “sufficiently distinct” test, how should it be cabined to be used only in clearly egregious cases?  One formulation might be: If an initial glance at the patented and accused designs, without dissecting them, does not reveal minor ornamental differences, then the prior art should be considered as a frame of reference in the infringement analysis.

The panel decision, dated April 24, 2025, can be found here.

Amicus briefs in support of the Petition (or in favor of neither side) are currently due July 10, 2025, but extensions of time should be available from the Court.

I urge you to seriously consider filing an amicus brief, for the benefit of your clients, and really for the benefit of the system as a whole.

AMICUS PARTICIPATION SOUGHT IN NORTH STAR V. LATHAM. ISSUES: THE UNDEFINED “SUFFICIENTLY DISTINCT/PLAINLY DISSIMILAR” TEST FOR DESIGN PATENT INFRINGEMENT, AND A SIGNIFICANT SUMMARY JUDGMENT QUESTION

The Federal Circuit unexpectedly handed down a quick decision in North Star v. Latham on April 24, 2025, a mere 2+ weeks after oral argument (link here to audio).  The Court’s opinion was, to be kind, confusing.  The Court affirmed the district court’s order granting Latham’s motion for summary judgment of non-infringement based on the district court concluding that the patented and accused designs were “sufficiently distinct”. This finding was reached despite the court having no guidelines for such a determination.

Full disclosure: I am lead counsel for North Star.

I refer you to my recent blog post for a short summary of the oral argument, as well as links to the parties’ appeal briefs.

North Star has decided to file a Petition for Rehearing and Rehearing en banc.  As noted previously, this case raises a terribly significant issue for design patent owners.  More particularly, the issue involves the standard for determining design patent infringement, particularly on summary judgment.  North Star is seeking amicus support which can be critical to whether the Petition is granted.

The case involves the design of a pre-fabricated swimming pool, and provides an opportunity to clarify the application of the “sufficiently distinct” test (a/k/a “plainly dissimilar”).  This test was mentioned in passing in one sentence in Egyptian Goddess yet never defined by any court and still incredibly critical in determining design patent infringement.  Significantly, the Court’s opinion in Egyptian, before even mentioning “sufficiently distinct”, spent several pages stressing the need to determine infringement “in the context of the prior art”. 

Equally important in the Court’s decision, it upheld the lower court’s decision at the summary judgment stage—despite infringement (“substantially the same”) being a fact question and despite evidence of retailer confusion in a social media post.  The outcome is in no way consistent with Gorham v. White, Egyptian Goddess, and Anderson v. Liberty Lobby.

North Star’s patented pool design and Latham’s accused infringing design appear below:

North Star’s Patented Design

Latham’s Accused Infringing Design

The two pools both had the combination of six specific design features in common:

(1) a large rectangular tanning ledge extending across the full width of the pool;

(2) two linear rectangular steps leading from the tanning ledge to the shallow end of the pool, both linear steps extending the full width of the pool;

(3) long, thin substantially rectangular benches in opposite corners of the deep end of the pool;

(4) the same general proportions of the tanning ledges, linear steps, and rectangular benches;

(5) a bottom wall that has a gradual slope beginning at the two linear rectangular steps and continuing to the opposite deep end; and

(6) longitudinal symmetry with respect to the above elements (1) – (5). In other words, both pool designs have the same appearance from both sides.

If these six elements were in a utility patent claim, it would be literally infringed by Latham.

A visual comparison of the designs shows the high degree of similarity.  The similarity of the patented design and the accused infringing design is further highlighted by the three-way test—an objective comparison of the two designs at issue with the closest prior art design, an analysis endorsed by the Court in Egyptian. This three-way test was not challenged by Latham.  Following is one example used in North Star’s brief:

It is fairly clear that - even to an ordinary observer - the overall appearance of the patented and accused designs are much closer to each other than either is to the overall appearance of the prior art pool.

The Federal Circuit ignored North Star’s three-way tests, and declined to explain how a court or factfinder is to assess whether an accused design is “sufficiently distinct” or “plainly dissimilar” from the patented design.  

Instead, the panel appeared to discount North Star’s patented design because it contains design elements that are not novel.  Slip op. at 5 (“North Star cannot monopolize common ornamental pool features or functional pool features by registering a combination of those features as a design patent.”).  Of course, North Star’s patent does not “monopolize common ornamental pool features,” as there are myriad configurations of pools—just as there are myriad configurations of tables even though all tables have a set of legs and a flat surface.  Instead, the patented pool design captures an ordered combination of elements arranged in a unique way to create a popular pool product.  

The panel’s opinion adds further confusion to the undefined “sufficiently distinct” test because the opinion conflates ambiguous arguments about patentability and functionality—even though the district court’s grant of summary judgment did not rely on functionality or validity.

Judge Hughes’s remarks during oral argument—which conflicted sharply with his written opinion— illustrate why, at a minimum, this case should have gone to the jury:

“But if I'm a homeowner looking at these two designs, they look pretty similar to me. They're rectangles. They have tanning beds. They have steps. They have benches on the deep end. They look fairly similar with very minor differences between the two things. I mean, do you think that if it had gone to a jury and they found infringement that we would be looking to reverse this on a JMOL? I mean, it seems to me like just the two pictures would be substantial evidence to support infringement.”

The Petition is currently due May 24, 2025.  North Star has filed a request for a one-month extension (to which Latham has agreed) which if granted would push the deadline to June 23, 2025.  Amicus briefs supporting North Star (or neither party) are due two weeks after the petition is filed.  

North Star seeks amicus support, from IP associations, corporations, and clients of design patent practitioners. Amicus support is critical at the petition stage, as evidenced by the recent LKQ case.   If you, your company, your association, or any of your design-forward clients are interested in becoming an amicus, or if you have any questions, feel free to email me at ps@perrysaidman.com and I will send you a memo that discusses these issues in greater detail.

By the way, my paper “Sufficiently Distinct” – “An Insufficient Test for Design Patent Infringement” has now been published in IP Theory, a journal of Indiana University’s Maurer School of Law, and is available there for download.

DESIGN PATENT CONUNDRUM – The Test for Design Patent Anticipation vs. The Test for Priority

In re Floyd (No 2023-2395) (nonprecedential), handed down by the U.S. Court of Appeals for the Federal Circuit on April 22, 2025, raises an odd issue between the test for design patent anticipation and the test for priority.  

The applicant appealed the Patent Trial and Appeal Board’s decision holding that her priority claim to her parent application was denied because the parent application did not explicitly disclose the claimed design.  And as a result, the Board held that her claimed design was  anticipated by the parent application drawings.

The claimed design was a cooling blanket that has an array of squares arranged in a 5x6 configuration, while the parent application disclosed two similar but not identical configurations:  a 4x6 configuration, and a 6x6 configuration (the parent application was a pending utility patent application). 

Parent Priority Application

Claimed Design

The Federal Circuit affirmed the Board’s decision, finding that the test for priority - “whether a skilled artisan would recognize that Floyd possessed the particular design claimed in the parent application” was not met. The Federal Circuit noted that “The [parent] application’s disclosure of two specific arrays of individualized compartments provides no basis on which to conclude that a skilled artisan would necessarily recognize that she possessed the different claimed six-by-six design.”  The Court parried all of Floyd’s arguments to the contrary.

Regarding anticipation, governed by 35 U.S.C. 102, the Federal Circuit did not deal with it at all, because it was not challenged by the applicant on appeal. It implicitly agreed with the Board’s holding:  “Applying the ordinary observer test for anticipation, the Board affirmed the Examiner’s finding that the … [parent] application anticipated the design claimed in the [current] application.” 

It was not surprising that Floyd did not challenge the Board’s finding that because priority was denied, the design was anticipated by the parent application because the claimed 5x6 array was “substantially the same” as that shown in the parent application, i.e., the 4x6 and 6x6 arrays.  This is because the test for design patent anticipation has become entrenched in the case law since the case of Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) which held that the test for anticipation was the same as the ordinary observer test for infringement, i.e., whether the claimed design and the prior art were “substantially the same” in the eye of an ordinary observer.

But the result in the Floyd case is still a bit odd: priority was denied because the prior art in the parent application (the 4x6 and 6x6 arrays) did not disclose the exact claimed design (a 5x6 array), and yet the same 4x6 and 6x6 arrays in the parent application was sufficient to anticipate, and thus render unpatentable, the 5x6 claimed design.   

How can a claimed design be denied priority because the claimed design is not shown exactly in the priority document, and the same priority document nevertheless anticipates the claimed design that is not shown exactly in the priority document?

Traditionally, the decision was justified by the fact that in the case law, the test for claiming priority is not the same as the test for anticipation.   

But, as I have pointed out for years, the test for design patent anticipation, as interpreted in the 2009 case of International Seaway, is clearly incorrect.  Seaway held that the test for anticipation is the same as the test for infringement.  This holding veered sharply from the prior case law which held that the test for anticipation is whether the same design is “identical in all material respects” as the claimed design, as was stated in Hupp v. Siroflex 122 F.3d 1456 (Fed. Cir. 1997) and many other cases prior to Seaway.

In fact, the “identical” standard for anticipation is literally supported by language in the statute itself.  35 U.S.C. 103 begins: “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102…” (emphasis added).  For years, anticipation in both utility and design patents required the prior art to disclose the identical claimed invention.

So how did Seaway change the “identical” standard to the “substantially the same” standard?  Basically, by misinterpreting – more particularly, not updating - the holding in the 1889 Supreme Court case of Peters v. Active which set forth the famous “maxim”:  “that which infringes, if later, anticipates if earlier”.  I have explained the Seaway court’s erroneous interpretation of this “maxim” as applied to design patents in my 2020 article Design Patents Are Sinking in International Seaway: Rethinking Design Patent Anticipation, which I first posited in a brief snippet 9 years earlier in BNA’s PTC Journal.  Because my analysis is somewhat lengthy, I shall refrain from detailing it here, but commend you to those articles for a thorough explanation.

Assuming I am correct (I welcome challenges to my analysis), the “substantially the same” infringement test is an improper test for design patent anticipation.  Therefore the result in Floyd would have been different, and would have actually made sense.  Using “identical” as the proper test for anticipation, in spite of the fact that priority to Floyd’s parent application was denied, the claimed design would not have been anticipated by the priority document.  In other words, the fact that the identical design was not found in the priority document would have meant that the priority document did not anticipate the claimed design.

One day, maybe we can anticipate (ha) that the Court will revisit the holding in Seaway and restore the test for design patent anticipation to its proper “identical” standard, as set forth in many cases prior to Seaway, and, in fact, as set forth in the patent statute itself.

NORTH STAR v. LATHAM DESIGN PATENT APPEAL ARGUED AT FEDERAL CIRCUIT

The oral argument in North Star Technology International Limited v. Latham Pool Products (No. 2023-2138) was held April 8, 2025 at the U.S. Court of Appeals for the Federal Circuit.  The 3-judge panel consisted of Judges Lourie, Chen and Hughes.  Full disclosure:  I am lead counsel for North Star in this appeal.

North Star sued Latham for infringing U.S. Pat. No. D791,966 on the design of a swimming pool. My previous blog post summarized the district court’s order granting summary judgment of non-infringement in favor of Latham.     

The key issue in the case, insofar as design patents are concerned, is whether the district court properly decided on summary judgment that the patented and accused designs were “sufficiently distinct”, and therefore the accused design did not infringe, rather than let that issue be tried to a jury.

I thoroughly explored this topic in my paper “Sufficiently Distinct is Insufficient to Determine Design Patent Infringement”, to be published in a forthcoming issue of the law journal IP Theory of the Indiana University Maurer School of Law.

The appeal briefs detail the arguments of the parties. Here is North Star’s opening brief, Latham’s response, and North Star’s reply brief.

Matthew Dowd of Dowd Scheffel argued for North Star, while Russel Korn of Kilpatrick Townsend argued for Latham. A recording of the oral argument is here.

A decision from the Court is expected in 3-4 months.

ANNOUNCING A UNIQUE CLE PROGRAM ON JANUARY 14, 2025

It is entitled "Practicing Holistic, Humanistic Law," and will be live at noon ET on January 14, 2025.  The recording can be accessed for credit for a year. A nationwide CLE provider, TRTCLE is charging a commercial rate of $99, but they have given Design Law Perspectives subscribers a special rate of $39 available until January 14. This link goes right to the special rate.

About This Course:

Practicing law can be fulfilling, humanistic, and effective. The program is provided by The Project for Integrating Spirituality, Law, and Politics (PISLAP; https://www.spiritlawpolitics.org/), an organization that spreads healing models of law practice that move beyond the highly stressful traditional format—a narrow analytic focus on legal issues with an adversarial approach to other parties.

PISLAP promotes attending to clients' emotional, spiritual, and physical needs while addressing their legal problems. This program will introduce lawyers to integrative practices: holistic criminal practice, restorative justice, and treatment courts. The faculty will discuss how the shared values and tools of the integrative approach can make any kind of law practice more effective and meaningful.

PISLAP aims to improve lawyers' well-being. This program will also offer lawyers an experience with contemplative practice, which more and more lawyers find helps them remain calm, centered, and attuned to their clients amid a busy practice.

This program is suitable for law students and practicing lawyers with any level of experience.

Learning Objectives

•        Review the principal models of holistic and humanistic law practice

•        Recognize common themes and principles that link the growing number of integrative techniques

•        Evaluate and experience contemplative practice and its benefits

•        Analyze better results from addressing a client’s emotional and spiritual needs in addition to legal ones

•        Assess and appreciate the personal benefits to lawyers who practice in a humanistic fashion in conformity with their values

•        Explore current developments in law practice with themes that appear in other spheres of society, such as connections between all people, the importance of consciousness in social change, and creating social structures that meet people's needs

TO CONSIDER THE PRIOR ART, OR NOT CONSIDER THE PRIOR ART: THAT IS THE QUESTION

In two recent decisions, district courts in New York and Pennsylvania had diametrically opposed approaches for evaluating design patent infringement.  In both cases, the court granted the defendants’ motions to dismiss.  Keep in mind that the standard for granting a motion to dismiss is whether the complaint states a claim for relief that is “plausible” on its face.  This does not mean that the patent holder has to prove infringement by a preponderance of evidence (the standard for prevailing at trial), but simply must have pled its case plausibly, so that the case could go forward beyond the complaint and answer. Frequently, however, motions to dismiss are becoming effectively like summary judgment motions because in both the court evaluates the dispositive issue of infringement.

In Kohler Co. v. Signature Plumbing Specialties LLC, the court evaluated infringement of two patented faucet designs by simply comparing the patented designs to the accused designs, without reference to the prior art.  But in Homy Casa Limited v. Jili Creation Technology Co., Ltd., the court evaluated infringement by not only comparing the patented designs to the accused designs, but at least purported to do so in light of the prior art.  I say “purported” because the analysis of specific prior art in the Homy Casa opinion was sparse.

Two design patents on faucets were at issue in Kohler, identified only as the ‘988 patent and the ‘824 patent.  In the ‘988 patent there were two portions claimed in solid lines:  a portion of the handle and the baseplate (see Kohler’s Fig. 1 next to the Signature accused design):

Regarding the baseplate, the court noticed that the Kohler’s baseplate was “arched or domed” (Figs. 1 and 4)  while Signature’s was flat:

The court said: “This isn’t a question of whether Signature’s baseplate is arched or domed enough to be substantially the same as the claimed design.  It’s just a different design.”

Well, of course it’s different.  Competitors change design elements – sometimes ever so slightly - to try and avoid infringement. 

Regarding the handle portion, the court said: “[T]he handle in [Signature’s] faucet is of a greater width than the vertical portion of the faucet, while the opposite is true in the claimed design”, referring to the following figures:

Here the court was taking a measuring stick to the designs, as if they were blueprints, measuring their width and height.  There is no requirement that design patent drawings show actual dimensions of the claimed design.

The court concluded: [T]he [patented] design is plainly dissimilar from the accused faucet.  Indeed, if this were not the case, many faucets with differing designs, but which contain a handle and baseplate, would be arguably infringing.  Kohler’s patent isn’t a license to corner the market on water faucets…”   

Where do we start? 

First, and quite obviously, design patents never “corner” markets, they simply protect the design shown in solid lines in the drawings.

Second, the court never compared the overall claimed design (the baseplate + the handle features) to the accused design.  So the ultimate analysis – whether the overall appearance of the accused design was substantially the same as the overall appearance of the claimed design – was never performed.

Third, and most egregiously, there was no comparison to the prior art.  The seminal Egyptian Goddess v. Swisa case from the Federal Circuit in 2008 virtually screams out that a patented and accused design must be compared “in the context of the prior art”.  Instead, the Kohler court simply compared individual components, and noticed some differences, which is relatively easy to do.  Simply identifying differences should not be the test, since infringers almost never copy a design exactly.  As clearly stated in Egyptian, considering the two designs in light of the prior art provides a framework for determining whether an ordinary observer would consider them to be substantially the same.  The Federal Circuit in Egyptian said:

“Particularly in close cases, it can be difficult to answer the question whether one thing is like another without being given a frame of reference. The context in which the claimed and accused designs are compared, i.e., the background prior art, provides such a frame of reference and is therefore often useful in the process of comparison.”

In other words, using the prior art as a frame of reference provides some objectivity to the infringement analysis.  If the prior art is not considered, the conclusion of infringement is purely subjective, leaving the conclusion of infringement or non-infringement to the whim of the court.

The court in Kohler used the term “plainly dissimilar” in comparing the patented and accused designs, a term which is used by courts interchangeably with the term “sufficiently distinct”.  This is sanctioned by one sentence in Egyptian that seems to permit the fact-finder to ignore the prior art:

“In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear "substantially the same" to the ordinary observer, as required by Gorham (emphasis added).”

Once again, a finding that two designs are “sufficiently distinct” is a purely subjective conclusion, depriving the litigants of any objective guideposts with which to evaluate the case.  After all, how can any self-respecting design lawyer tell his/her client whether or not its patented design is sufficiently distinct from an accused design?  It’s virtually impossible.

As I have posited in my recent article (available on SSRN) “Sufficiently Distinct is Insufficient to Determine Design Patent Infringement”, the term “plainly dissimilar” or its sister term “sufficiently distinct” should be used very sparingly, only in situations where the two designs are, on first glance, manifestly different in appearance, such as a flip phone compared to an iPhone. Such a standard would greatly reduce the tendency of lower courts to dispose of cases in which the designs are actually close enough to present a fact question for the jury.  This would still permit a court to quickly dispose of those cases that on their face are not meritorious, i.e., do not present a plausible claim of infringement.  In my research covering cases decided post-Egyptian, almost all of them would have benefitted from a 3-way analysis between the patented design, the accused design, and the prior art.  In fact, even before Egyptian, courts routinely made such a 3-way comparison.  Examples of both pre- and post-Egyptian cases are illustrated in my paper.

Turning to the Homy Casa case, which analyzed four design patents on chairs, the court at least purported to take into account the prior art.  It included 18 such pieces of prior art in Appendix I to its opinion:

In considering the design patented in D808,669, after the standard exercise in enumerating the differences between the patented and accused designs, the court said: “While these differences might seem minor at first blush, they are significant in light of the prior art.”  The court noted that the parties were entering into “a crowded field of midcentury modern dining room side chairs”, noting that “Plaintiff, Defendant and many others have designed and sold side chairs that are generally similar to the chair designed by  Charles Eames”, referring to Appendix I which showed an illustration of an Eames chair from USPN 2,893,469.   

The court then said: “The design in the ‘669 patent is distinguished from the prior art by its seat shape and interior offset.  It is these same differences that distinguish the ‘669 patent from Defendant’s product.”  While this logic is facially plausible, the court did not directly compare the patented and accused designs to the Eames prior art, or any other prior art.  It performed a similar analysis with respect to D920,703 and D936,991 but without specifically identifying any particular piece of prior art from Appendix I.  For the last patent at issue, D936,992, the court did specifically mention the Chavarria prior art from Appendix I (D811,790), but again did not specifically compare its features or overall appearance with those of the patented and accused designs.

In sum, the Homy court referred to the correct standard in requiring a comparison to the prior art, but it did not do much of a comparison.  This is evidenced by the inclusion in Appendix I of 16 prior art patents, while referencing only two of them in its opinion.  And the court’s main analysis consisted of calling out differences between the patented and accused designs, which again is a subjective analysis, easy to do.  As evidence, the court appended photos comparing the patented and accused designs in its Appendix II:

Similarly Appendix V showed the ‘992 patent next to similar views of its accused design.

Appendices III and IV visually compared the other two design patents to the corresponding two products of the defendant.

It would have been far better if Appendices II-V contained 3 columns: the patented design, the accused design, and the closest prior art. This would have provided some objectivity to the infringement analysis, essentially asking the fact-finder: are the patented and accused designs closer to each other than either is to the closest prior art? (in which case a finding of infringement would be justified); or are either the patented or accused designs closer to the prior art than they are to each other? (in which case a finding of non-infringement would be justified).

It is not my purpose here to perform such an analysis, i.e., to say whether the Kohler and Homy courts’ conclusions about infringement were correct, but simply to point out that the Homy court went slightly further than the Kohler court in at least acknowledging that the prior art should play a significant role in analyzing design patent infringement, as is clear from Egyptian. 

The next step would be, of course, for a court to actually perform such a 3-way analysis.

DOES “SUFFICIENTLY DISTINCT” MAKE SENSE AS A TEST FOR DESIGN PATENT INFRINGEMENT?

I have written a paper entitled: “Sufficiently Distinct” Is Insufficient to Determine Design Patent Infringement”. It has been accepted for publication next spring in IP Theory – a journal of The Maurer School of Law of Indiana University.  It will also be posted soon on SSRN. 

Here is the SSRN Abstract:

The “ordinary observer” test for design patent infringement essentially asks whether the patented and accused designs are “substantially the same” in overall appearance.  Although courts are very skilled in listing differences between the two designs, the final infringement determination is very subjective, being based on the personal observations and feelings of the fact-finder.

In the 2008 en banc decision of Egyptian Goddess v. Swisa, the Federal Circuit abolished the “point of novelty” test that, despite its flaws, had brought some objectivity to the infringement determination.  In its place, the Court in Egyptian repeatedly emphasized the need to view the patented and accused designs in the context of the prior art in order to provide a frame of reference for determining substantial similarity.

However, in one sentence of Egyptian, the Court said that the prior art did not need to be reviewed if the patented and accused designs were “sufficiently distinct”.  But there were no guidelines, in Egyptian or later cases, about how to determine whether two designs are “sufficiently distinct”.  Since then, an outsized number of cases have relied on this clearly subjective determination.

This paper posits that guardrails are needed so that the “sufficiently distinct” test is applicable in only the most egregious of circumstances, when the two designs are – at a glance – markedly different, and that in nearly all cases a comparison with the prior art is appropriate.

ATTENTION CORPORATE AMERICA! IT’S TIME TO ADOPT A U.S. DESIGN REGISTRATION SYSTEM

We’ve all had a chance to absorb, and perhaps wretch over, the LKQ v. GM decision wherein the Federal Circuit last month jettisoned the venerable Rosen/Durling tests for determining whether a claimed design is non-obvious.  See my earlier blog where I attempted to deconstruct the opinion. 

The LKQ case leaves a whole lot to be desired.  In overturning Rosen and Durling, which were used over 40 years to analyze Sec. 103 for designs, the Court basically adopted the utility patent test for determining design patent obviousness.  Forty years of development of design patent case law have been wiped out.  We are back to 1952, when Sec. 103 was first enacted, and the subsequent Graham v. John Deere case from the Supreme Court in 1964 setting forth a 4-part inquiry for determining obviousness of a utility patent.  This was all done in the name of the Supreme Court’s KSR decision of 2007 in which the Court required that Sec. 103 analysis be performed with “flexibility” – again, in a utility patent case. 

The LKQ case leaves design patents in limbo.  It will create lots of work for design patent lawyers and litigators, to be sure, but will also give their clients grave anxieties.  The result, no doubt, will be fewer design patents being found valid and even fewer being applied for.  Combined with the recent steep increase in USPTO fees for design patent applications (from the current $1,760 to $2,600), even the large corporate rights-holders are likely reevaluating whether design patents are worth it.  In the absence of an alternative, many will continue down the design patent path.

Is there an alternative?  Yes.  It’s in the form of a new law, a system for registering (not examining) designs.  But without you, Corporate America, it won’t happen.

As background to this post, I suggest that you review my August 1, 2023 post: AN OBVIOUS WAY TO RESOLVE THE DESIGN PATENT NON-OBVIOUSNESS PROBLEM. In that post, I explained in detail the history of how non-obviousness for designs has always been problematic.  The venerated CCPA Judge Hon. Giles Rich spoke out often about the subject.  As one example, he wrote a concurring opinion in In re Nalbandian 661 F.2d 1214 (C.C.P.A. 1981) wherein he said:

“It is time to pass [a design registration system] and get the impossible issue of obviousness in design patentability cases off the backs of the courts and the Patent and Trademark Office, giving some sense of certainty to the business world of what designs can be protected and how. (emphasis added).” 

Now, in the wake of LKQ, this makes more sense than ever.  Nobody knows how LKQ will be applied.  The USPTO doesn’t know.  Applicants for design patents don’t know.  Their clients don’t know.  The PTAB doesn’t know.  The federal district courts don’t know.  Corporate America doesn’t know. And the Federal Circuit left so many questions open in LKQ, they don’t know either.  Nobody knows what LKQ hath wrought.

Webinars will be given that purport to predict what will happen, and to give advice to design patent applicants about how best to navigate design patent non-obviousness in the post-LKQ world.  But although well-intentioned, it will be somewhat speculative advice, because, like the stock market,  no one knows what will happen.

In 2007, I gave a speech before the AIPLA Industrial Designs Committee advocating the adoption of a sui generis design registration system much like that advocated by Judge Rich.  At the time, there were some troublesome things happening to design patents (see my article The Crisis in the Law of Designs).  But some design patent practitioners who heard the speech could see only the downside.  As I recall, the main objection was something like “I’d rather deal with the devil we know [i.e., design patents] than the devil we don’t know [i.e., design registrations]”.

Following the AIPLA speech, my good friend, the late Theresa Esquerra and I wrote an article (“A Manifesto on Industrial Design Protection: Resurrecting the Design Registration League”, 55 Journal of the Copyright Society of the USA 2-3, Winter-Spring, 2008).  We called on design rights-holders to form a coalition, which we dubbed The Design Registration League (DRL) based on the name of the original group advocating such legislation in the 1910s.  Here’s an article on the DRL from the New York Times in 1922.   Nothing much happened.

Later I also spoke at the USPTO’s annual Design Day advocating the same thing.  The USPTO design patent examiners and officials in attendance were somewhat in shock, feeling that their very livelihoods were at stake, despite a provision in the bill that actually preserved the design patent system.  Nothing much happened.

In retrospect, I feel that the main reason nothing happened was that Corporate America did not get behind it.  Without serious support and lobbying, nothing happened, and nothing was going to happen. 

In an attempt to create more momentum, Theresa and I actually drafted a Design Registration Bill.  It wasn’t as hard as it sounds.  We simply started with the Vessel Hull Act, a law already on the books that is part of the Copyright Act (17 U.S.C. 1301 et seq.).  The Vessel Hull Act, in turn, was patterned after previous unsuccessful design registration bills including those advocated by Judge Rich.  We changed the class of designs to be protected, i.e., vessel hulls, to “designs”.  We consulted with officials at the Copyright Office to garner their support, to elicit their views on various terms in the draft and amended it accordingly.  We also looked at the highly successful Registered Community Design (RCD) system in Europe, and solicitated input from European practitioners.  Finally, we inserted and deleted some provisions that we had been deemed problematic in the design patent system. 

The bill we drafted is far, far from perfect, but we thought it would make a good starting point, with the the eventual terms being negotiated by rights holders and other interested parties.

It is clear that after LKQ, the time has come for Corporate America – the rights-holders with the greatest influence in Congress - to take a hard look at the uncertainties surrounding design patents and give serious consideration to adopting a design registration system.   

As stated by Judge Rich, it is high time to get the intractable issue of non-obviousness out of the design protection system.  Post-LKQ, it could not be more clear.

Personally, I would much rather have a system where design rights could be obtained inexpensively and quickly.  In my 40+ years of experience, most design patents are tucked away by my clients, to be pulled out only if there’s an infringement problem.  And the percentage of design patents that have an infringement problem is probably far fewer than 1%.  Why invest so much resources into a non-appreciating asset having such little use?

In the EU, design registrations can be obtained quickly and cheaply, especially considering that a registration covers all 27 EU countries.  Also, up to 100 designs can be registered in the same application.  Currently, it takes the USPTO ~17 months to issue a first Office action, while in Europe you can get a registration in as little as one week.

I am attaching the bill that Theresa and I drafted that was distributed at my 2007 speech.

One of the notable provisions of the bill is that within two years of a registration, the owner can file a design patent application and claim priority to its earlier design registration.  This would effectively result in a two-tier system, which has already been used to good effect in other countries, e.g., Australia.

An infringement occurs when someone copies the protected design.  While protection is limited to copies, that is by far and away exactly how design patents are effectively used today - to stop copycats. In the draft bill, a design is not deemed copied if it is original and not substantially similar in appearance to the protected design.  The word “ornamental” is not in the bill, and “functionality” is clearly defined as a design for which there are no alternative designs that will perform substantially the same function.

A unique provision – suggested by the Copyright Office – is to establish staggered terms of protection based on the type of design.  Designs having relatively short lifetimes such as clothing and apparel would have a short term, while designs that have long lifetimes such as musical instruments and heavy machinery, would be given a long term. 

Another provision is that attorney’s fees shall be awarded to the prevailing party in an action for infringement.  This is an important bulwark against baseless claims by those who obtain weak or falsely obtained registrations and assert them against legitimate companies.

Statutory damages up to $250,000 or $5 per copy can be awarded, or the infringer’s profits.

Of course, other provisions could be added to the bill, such as: opposition proceedings; a process to deal effectively with online resellers; and/or using a design registration to stop imports at the border like trademark and copyright registrations are currently used.

Also, rather than the Copyright Office, the system could be administered by the USPTO, which makes sense if the two-tier provision is adopted.

I urge you to review the bill.  Give it to your corporate clients for serious consideration.  Ask your professional organizations (the AIPLA, IPO, INTA, ABA) to get behind it.  Organize. Let’s get the ball rolling.

I’ve had enough of everyone trying to shoehorn design patents into the utility patent system, a gift that keeps on giving - to infringers.

Let’s get the United States into the 21st century and enact design protection legislation that makes sense. 

LKQ v. GM REDUX – WITH APOLOGIES TO THE USPTO

In my blog post yesterday I predicted that it would take a long time for the USPTO to issue guidance to Group 2900 examiners on how to handle obviousness rejections based on the en banc decision of the Federal Circuit in the LKQ v. GM case.

I was wrong.

On May 22, 2024, one day (!) after the decision was handed down, the USPTO issued “Updated Guidance and Examination Instructions for Making a Determination of Obviousness in Designs in Light of LKQ Corp. v. GM Global Technology Operations, LLC”.  It was signed by Kathi Vidal, Director of the USPTO.

The document in large part reiterated what the CAFC said in it’s opinion (there is something new!), but the speed with which the guidance was released must be a record for the USPTO as concerns design patents.  Kudos!

Interestingly, the guidance included the following:

“… USPTO personnel must apply a flexible approach to obviousness similar to that applied in utility applications.  See MPEP 2141 et seq. for the guidelines to follow in utility applications.”

The Federal Circuit, in doing away with Rosen’s “basically the same” requirement for a primary reference and Durling’s “so related” requirement for a secondary reference, said that the new gateway for prior art is whether it’s “analogous”  to the claimed design, setting forth the 2-part test used in utility patent examinations to determine analogous art, without hinting as to how prior art is analogous under the second part of the test, the part that addresses whether a reference outside the field of endeavor is analogous.   

Responding to the analogous art issue, the USPTO said:

“As the Federal Circuit did not define how to determine whether a prior art design doutside the field of endeavor of the article of manufacture is analogous, the design examiner should consider the degree to which an ordinarily skilled design would be motivated to consider other fields (emphasis added).” [ED note: absent was any guidance for how to determine motivation.]

The guidance went on (this is the new part):

“If the examiner questions whether a design is analogous art, the examiner should confer with their supervisory primary examiner (SPE). The USPTO will compile examples of when it has determined a reference to be analogous art, and those examples will reduce the need to discuss the determination with an examiner’s SPE over time.”

Then, getting to the meat of the issue, the USPTO reiterated almost exactly what the CAFC said about how to determine obviousness.  Interestingly, the USPTO guidance directed examiners to use Form Paragraph 15.19.aia to make a rejection based on two or more references.  This form paragraph simply says:

MPEP 15.19.aia 35 U.S.C. 103 Rejection (Multiple Reference)

“The claim is rejected under 35 U.S.C. 103 as being unpatentable over [1] in view of [2]. Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.”

Finally, the examination instructions said that “The USPTO is continuing to study LKQ in the context of existing precedent; further guidance and training will be forthcoming.”

Everyone in Group 2900, as well as the design patent bar,  anxiously awaits such further guidance.

WHERE IS DESIGN PATENT OBVIOUSNESS HEADING? VEGAS, BABY!

The U.S. Court of Appeals for the Federal Circuit handed down its long-awaited en banc decision in LKQ v. GM, the case that decided whether the Supreme Court’s KSR’s utility patent obviousness test applies to design patents. 

Sadly, for some, the Court answered in the affirmative, concluding that KSR’s requirement of “flexibility” in obviousness analysis required the Court to abandon the venerable Rosen and Durling cases, essentially overruling them.

I said “for some” since the decision will be a boon for challengers (alleged infringers) to contest the validity of design patents.  The PTAB will also see a rise in business.  And, of course, lawyers will be much busier trying to figure out what the LKQ case means. 

For others, like patentees and design rights holders, the decision calls into question not only the validity of their 400,000 unexpired design patents, but whether design patents are still worth the not-inconsiderable cost of obtaining them.   And the USPTO’s design patent examining group 2900 will have their knickers in a twist trying to figure out new rules/regulations for how obviousness will be determined by design patent examiners.  Note:  one can expect a long wait for such rules/regulations, since it took the USPTO quite a long time to provide guidance to examiners regarding less significant, but important recent cases, such as In re: Surgisil.

Perhaps, on the bright side, serious consideration might now be given to creating a US design registration system (the subject of an earlier blog) where a rights-holder can quickly and cheaply obtain a design registration without having to undergo what will now become an even more expensive and problematic examination.  Under such a system, registrations will be relatively easily obtained. But only those that are important, e.g., are being infringed, would likely be challenged by an infringer in a validity proceeding, to be presided over by the PTAB.  I imagine that perhaps 98% of design patents are never violated or enforced, so the huge investment in obtaining them would, under a registration system, be avoided.  Those 98% can quietly sit in an owner’s stable, and if and when an infringement problem arises, the registration can be upgraded to a design patent after full examination.  I’ve proposed this in an earlier blog, and, in view of the LKQ case, will elaborate in a coming post.

The particular facts about LKQ v. GM are beyond the scope of this post, but the lead-up to the current decision has been extensively discussed in numerous prior posts here here here and here

Those are my opening thoughts about LKQ. My other observations follow, in no particular order:

1.       SMITH v. WHITMAN SADDLE

The Court relied heavily upon the Supreme Court’s 1893 design patent decision of Smith v. Whitman Saddle, involving a design patent on a saddle where the patentee essentially (but not completely) combined half of the prior art Granger saddle and half of the prior art Jenifer saddle.  Below are illustrations of the patented design, the Granger, the Jenifer, and the accused design.

PATENTED DESIGN

GRANGER

JENIFER

ACCUSED DESIGN

Even after combining the two halves, a significant feature of the patented design – a drop in the pommel – was absent from the accused design, so the Court concluded that there was no infringement.  But it did not hold the patented design devoid of novelty, i.e., in the parlance of the day it did not lack inventiveness.  In essence, this was an infringement case, not a validity case.  So whatever the Court had to say about the patentability of the design was dicta. Nevertheless, the Federal Circuit relied heavily on it in LKQ. 

Two sentences of the Court’s LKQ opinion really grabbed me.  First, in discussing Rosen, it said: “[In Whitman Saddle], the Court did not ask whether the design of the prior art Granger saddle was “basically the same” as the claimed saddle design.”  Later, in discussing Durling, it said: ““[T]he Supreme Court did not ask [in Whitman Saddle] whether the Granger and Jenifer references were “so related” that the use of certain ornamental features in one would suggest the application of those features to the other.”

It almost goes without saying that Whitman Saddle was decided almost 60 years before Sec. 103 was enacted by Congress in 1952, long before Rosen was decided in 1982, long before Durling was decided in 1996, and obviously (pardon the pun) long before 2024 when LKQ came before the Court. 

Suggesting that the Rosen and Durling requirements were not the tests used by the Supreme Court in Whitman Saddle is like saying Gorham v. White (1871) didn’t mention that one had to evaluate the similarity between the patented and accused designs “in the context of the prior art” as required in the 2008 Egyptian Goddess case, or that the Litton “point of novelty” test is flawed because it was not quoted in Gorham.

Whitman Saddle’s precedential value to LKQ is thus highly questionable.

Therefore it's interesting to me that Whitman Saddle formed the backbone of the Court’s opinion in LKQ.  In considering first the Rosen test requiring a primary reference to be “basically the same” as the claimed design, the Court said that the Rosen test “does not adequately align with…Whitman Saddle”, and that “The Rosen “basically the same” requirement is … inconsistent with the Supreme Court’s analysis in Whitman Saddle”.   It seems like the Court’s real objection to Rosen was that in the absence of a primary reference that is “basically the same” as the claimed design, the analysis “abruptly” ends, which is not a broad and flexible test as required by KSR.

The Court also said that “[N]either the Granger nor Jenifer would qualify as a Rosen reference.” I respectfully disagree.  After looking at the drawings, I think either Granger or Jenifer would have qualified as a Rosen reference.

The Court also said that Durling’s “so related” requirement was inflexible because it “denied factfinders recourse to common sense.” However, there are many examples where the same Court resorted to common sense in deciding obviousness of a design patent, such as in the Campbell Soup case where the Court imputed the existence of a claimed can in a purportedly primary reference, Linz, even though no can was there (see my previous blog).  In the MRC v. Hunter case, the absence of surge stitching in a secondary reference was not fatal to an obviousness holding, the court finding the surge stitching to be de minimus.

2.       ANALOGOUS ART

The second major issue that the Court tackled, having done away with Rosen’s “basically the same” requirement for a primary reference and Durling’s “so related” requirement for a secondary reference, was the threshold for determining the appropriateness of a prior art reference in design patent obviousness analysis.  This threshold turned out to be whether the prior art was “analogous” to the claimed design.

In order to get there, the Court first cited the 3 part inquiry for obviousness analysis set forth in the Supreme Court’s seminal Graham v. John Deere decision of 1966 (which was based on obviousness of a utility patent claim). 

This is not altogether inappropriate, since Graham has been cited in a number of design patent cases as the framework for Sec. 103 analysis, even before the court decided Rosen and Durling.  And Graham is deeply ensconced in patent law, including being cited in Chapter 1500 (Design Patents) of the MPEP.  Although being frequently cited, it hasn’t been regularly applied – just cited.  In other words, most courts have just given lip service to Graham, before going on to a Rosen/Durling analysis.

Nevertheless, the Federal Circuit in LKQ has essentially re-established (one might say reincarnated) the Graham framework for design patent obviousness analysis.  For those of you unfamiliar with Graham, it comprises a 3 step inquiry:

First, determine the scope and content of the prior art.

Second, determine the differences between the prior art and the claims at issue.

Third, determine the level of ordinary skill in the art.

Then, secondary considerations, e.g., commercial success, copying, long felt but unsolved needs, etc., can be considered.

Here’s where analogous art comes in.  In the first step of Graham, the Federal Circuit “reaffirmed” that “an analogous art requirement applies for obviousness of design patents.”, and that “we limit the scope of the prior art to analogous arts.”

In limiting the scope of prior art usable in obviousness analysis of design patents, the Court had to implicitly overrule the seminal In re Glavas case of 1956 (upon which Durling had been based).  In Glavas, the CCPA said that “the principle of nonanalogous arts … cannot be applied to design cases in exactly the same manner as to mechanical cases because design patent combinations rely on appearance rather than use.”  Even though the CCPA’s logic in Glavas is IMHO still valid, it has clearly bitten the dust.

The Court cited the two-part utility patent test to determine the scope of analogous art:  (1)  whether the art is from the same field of endeavor as the claimed invention; and if not then (2) is the reference still “reasonably pertinent” to the particular problem with which the inventor is involved. (emphasis added).  It is immediately apparent to any design patent practitioner that rarely, very rarely, is a designer concerned with solving a particular problem, as opposed to utility patent inventors.  Industrial designers are normally tasked with designing a new product, one that is distinctive, and not a simple follow-on to a competitor’s product.  The designer’s goal, in many cases, is to get as far away as possible from competitors’ designs to create an appearance of its own, which in many cases can result in a brand of the owner.  There are no “particular problem[s]” to be solved.  So, how do you apply the analogous art test to designs?  The LKQ court said the first step is easy:  appropriate prior art will almost always be in the same field of endeavor as the designer’s article of manufacture.  As to how to apply the second step? The Court essentially said “we don’t know” and let future cases figure it out.

Let the games begin!

One particularly vexatious sentence of the Court’s analogous art discussion was this:  “The primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, but it need not be, so long as it is analogous art.”  But the Court had just said it could not give guidance on the second test for analogous art. 

Let the games begin!

What about the In re Surgisil case where the court said that a prior art reference in an anticipation rejection had to be the same article of manufacture as that of the claimed design? 

What about the recent holding in Columbia v. Serius where the Court held that in infringement determinations comparison prior art had to be the same article of manufacture as the claimed design?

But now the Court is saying that prior art in an obviousness case – whether a primary or secondary reference - need not be the same article of manufacture as the claimed design.  It only has to be “analogous”, but you go figure out what that means.

The outcome?  Prior art available for obviousness rejections/defenses will enlarge. Obviousness rejections in the USPTO will undoubtedly increase (with a concomitant decrease in anticipation rejections), as will obviousness defenses in litigation, and obviousness challenges in the PTAB.  

At least the Court said, with respect to Graham factor (1), that a primary reference must be identified.  But it need not be “basically the same” as the claimed design (the Rosen test).  Thankfully the Court tried to put to rest the “Frankenart” problem in approving the In re Jennings warning that “the primary reference [cannot be] something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.”   

3.       MOTIVATION TO COMBINE

In a short portion of the opinion, the Court reiterated that the Graham factors must first be considered, and then the obviousness inquiry is “whether an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design” citing Campbell Soup (emphasis added).

The Court, while dispensing with the need for a primary and secondary reference to be “so related”, again stated that they both must be analogous to the claimed design (while leaving how to determine that to future case law).  Then it said that the “motivation to combine” those references “need not come from the references themselves”…. “but there must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.” (employment opportunities for designers to be expert witnesses just skyrocketed). This presents a conundrum for the USPTO since it does not have any mechanism or resources to create a “record-supporting reason” for showing a motivation to combine.  The Federal Circuit was warned about this shortcoming in the PTO’s amicus brief.

The Court was quick to point out the obvious (pun intended):  “Just as with the analogous art inquiry, in the area of motivation to combine, the problem to be solved may have less relevance in the design patent context than in the utility patent context.”

Let the games begin!

4.       THE EFFECT UPON THE DESIGN PATENT SYSTEM

Finally, the Court addressed the concerns of several amici who quite properly pointed out how doing away with the Rosen/Durling tests would essentially create havoc in the design patent system, including “exposing up to 400,000 U.S. design patents to substantial uncertainty and upsetting settled expectations for applicants before the USPTO…” (from the AIPLA amicus brief).  The response of the Court:  “We do not agree.”  It said that Graham has been the law for a long time and there is considerable precedent from which the PTO and courts can draw when assessing obviousness in the design patent context.”

It is hard to imagine how precedent in utility patent obviousness determinations would be helpful, or even analogous (pun intended), in the design patent context, given how wholly different these two forms of patents are, i.e., utility patents protect a product’s functions without regards to how it looks, and design patents protect a product’s appearance without regards to how it works. 

5.       JUDGE LOURIE’S OPINION

Judge Lourie filed a concurring opinion in which he agreed with the result to vacate and remand the current case, but disagreed with the need to jettison the Rosen and Durling tests.  His main argument was that rather than overruling them, they could be modified to be more flexible, because “Overruling is destabilizing.  Courts should, if possible, rule in modest steps, not abrupt acts of overruling.”

Judge Lourie pointed to amicus briefs filed not by allies to LKQ  or GM, but by broad-based organizations “with a primary interest in the stability and clarity of the law”, including the IPO, AIPLA, INTA, the Institute for Design Science and Public Policy (full disclosure:  I co-authored the latter brief) and the IDSA.  

He said:  [W]e did not need to “overrule” a case with language that a reference’s ‘design characteriscs’ must be  “basically the same” to substitute “most visually similar”.  Those two phrases, he said, are basically the same or similar, pointing out that maybe the word “must” used in Rosen was excessive, and maybe the word “only” in Durling is excessive, but both Rosen and Durling could have been tinkered with, or fine-tuned, rather than overruled.”

He concluded that “Rosen and Durling … expressed the same concepts now adopted by the majority, albeit with a couple of unnecessarily strong words…. And should have been allowed to stand, as modified, rather than decisively overruled.

Kudos to Judge Lourie.  But one must ask why his common sense did not get the support of any of the other judges?  Perhaps the rest of the judges were wary of having its decision appealed to the Supreme Court which has not exactly been hospitable to some previous Federal Circuit decisions.  Perhaps it felt that it had to go all the way and overrule Rosen and Durling lest there be a repeat of the KSR case where the Supremes rejected the Federal Circuit’s TSM test.

Unfortunately, Judge Newman – who has over the decades demonstrated a deep understanding of design patent law - was not allowed to participate in the case.

Let the games (sigh) begin.

JUDGE REYNA: MORE DESIGNERS RESPOND TO YOUR QUESTIONS IN LKQ v. GM

My blog post yesterday provided one answer to Judge Reyna’s questions during oral argument of the LKQ v. GM.  He asked:

“Looking at all the amicus briefs that we got, and we’ve got quite a few of them, almost all of them, if not all, are within the auto parts and auto industry. Where’s everybody else? Where’s the outcry? Where are the other designers?”

I pointed to the brief filed on behalf of the Institute of Design Science and Public Policy (IDSPP) and 36 distinguished industrial designers, and the posting on IPWatchdog discussing same.

It was brought to my attention that the Industrial Designers Society of America (IDSA) also filed an amicus brief – co-authored by noted design lawyer Robert Katz -  that is relevant to answering Judge Reyna’s questions.  The voices of designers - other than those from the auto industry - are loud and clear.

WHERE ARE THE DESIGNERS? JUDGE REYNA WANTS TO KNOW.

On February 5, 2024, the U.S. Court of Appeals for the Federal Circuit (CAFC) held its en banc oral argument in the LKQ v. GM case to reconsider the obviousness test for design patents, during which Judge Reyna posed the following questions:

“Looking at all the amicus briefs that we got, and we’ve got quite a few of them, almost all of them, if not all, are within the auto parts and auto industry. Where’s everybody else? Where’s the outcry? Where are the other designers? . . . So aren’t we entering a slippery slope here in trying to fashion a new test under your arguments when we don’t fully understand the implications of what we’re doing?”

Charles Mauro, noted industrial designer and co-author of an amicus brief filed on behalf of the Institute of Design Science and Public Policy (IDSPP) and 36 distinguished industrial designers, penned an answer to Judge Reyna and the Court in a recent posting on IPWatchdog.  In the article’s introduction, Mr. Mauro stated:

“Listening to the argument, it became instantly clear that the designer’s voice was missing from the arguments of both parties. The judges had deeply probing and important questions that need the input of a design professional. As an experienced design professional, I penned this article to highlight the designer’s voice by providing answers to several critical questions posed by the court during oral argument.

“Judge Reyna’s questions hit the nail on the head. Any modification to basic design-patent law must consider the role of design in many industries—not just the concerns of one company in one narrow industry.

With a strong interest in this case, I took Judge Reyna’s questions as an opportunity to highlight our amicus brief,  which answers many questions and concerns presented during the oral argument.”

I encourage you to read the IPWatchdog article and the designers’ amicus brief to understand exactly why the designers’ input is so important in determining the proper test for design patent obviousness.

PATENT CONTINUATION STRATEGIES FACE MAJOR THREAT

In Sonos v. Google, in a decision dated October 6, 2023 from the US District Court for the Northern District of California, the court held that Sonos’ utility patent was unenforceable for prosecution laches based on “unreasonable and inexcusable delay”.  The utility patent was the latest in a long line of continuation applications filed by Sonos that claimed a priority date going back to 2006.  The 55 page opinion delved extensively into the technology of the patent, and the history of the law of prosecution laches.  Part of the court’s reasoning was based on Sonos’ alleged introduction of new matter in the asserted patent, although that was subject to some dispute. 

I can do no better than provide a link to the Patently-O story that has an extensive discussion of the case.  The post also has a link to the actual opinion from the district court.  You may also find of interest the posted comments, the vast majority of which were very critical of the decision, and many of which criticized the judge, William Alsup, who was characterized as an anti-patent judge.

Long story short, the decision does raise into question the very standard practice (at least in my experience) of filing continuation applications while waiting to see if a competitor later introduces a product which could be covered by a newly drafted claim.  Infringers are clever, especially in design patent practice, in making a few changes here and there in their products in an attempt to circumvent a particular issued design patent.  The patentee can then try and craft a claim in a continuation application to cover the new knock-off. Importantly, in order to preserve priority, such a claim must have a basis in the originally filed application, i.e., no new matter may be introduced in the patent being asserted.  Stated another way, the claim to the new knock-off must have written description support in the priority application.  

The Sonos case will no doubt be appealed to the Federal Circuit and will be closely watched by both utility and design patent practitioners.  I expect that a slew of amicus briefs will be filed in order to support long standing continuation practice. 

As a personal footnote, the Sonos case cites In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002) as “the decision in which the Federal Circuit applied prosecution laches for the first time”.  I have the unwanted distinction of having represented the applicant Bogese. The facts in this case are very different, and arguably more egregious, that those in the Sonos case.  A major distinguishing fact is that in Bogese prosecution laches was applied by the USPTO, while in Sonos it was applied by a federal court with equitable powers.  Judge Pauline Newman in Bogese wrote a vigorous dissent, saying essentially that the USPTO had no power to do what it did.   

p.s.  GM has filed its brief in the en banc case of LKQ v. GM involving the critical issue of design patent obviousness.  I will post comments with links to the GM brief and amicus briefs as soon as they are filed.

BREAKING (BROKEN?) NEWS! IN COLUMBIA V. SERIUS, THE FEDERAL CIRCUIT GIVETH WITH ONE HAND, TAKETH WITH THE OTHER

The long-awaited decision in Columbia Sportswear North America, Inc. v. Serius Innovative Accessories, Inc. (Columbia II) came down last week from the U.S. Court of Appeals for the Federal Circuit.  The Court ultimately reversed the jury’s finding of infringement, and remanded to the district court for a 3rd trial (the first trial being limited to damages).  For a full discussion of the background to this case, including images and opinions cited below, see my earlier blog posts.

This was a 33-page opinion, focusing on two substantive issues:  (1) whether comparison prior art must be of the same article of manufacture as the claimed design;  and (2) whether the infringer’s logo on its product has any bearing in determining infringement.   The Court spent 10 pages deciding the first issue, and 5 pages on the second.

The conclusion on the first issue was somewhat predictable in view of the Court’s prior decisions in Surgisil and Curver.  The Court concluded that comparison prior art must be of the same article of manufacture as the accused design.  Interestingly, the Court listed a half dozen previous cases where comparison prior art was a non-issue, because the comparison prior art used in those cases was always the same article of manufacture as the patented design.  It was able to identify only one case (and in a footnote no less) – Lanard Toys v. Dolgencorp – where it could have been an issue had the patentee raised it.  In that case, pencils had been used as comparison prior art for a claimed design to a chalk holder.

The more important issue was whether the infringer’s use of logos on its design could be taken into account in determining whether it was substantially the same in appearance to the claimed design.  If the answer is yes, then it offers infringers a rather easy roadmap to attempt to avoid infringement.  Simply stick your logo on your product. 

During oral argument on this case in January, 2023, Columbia’s counsel Chris Carani valiantly tried to impress upon the Court the critical importance of this issue when he said:

“[Branding information] is not just another line, or curve, or surface, this is supercharged information” and “This is radioactive information, a maiden voyage, a tinderbox. If upheld, the infringers have a slam-dunk holding of non-infringement.”

He was not overstating the problem. 

Columbia hung its hat on improper jury instructions, saying the court failed to tell the jury (1) that consumer confusion as to source is irrelevant to design-patent infringement, or (2) that a jury need not find a likelihood of confusion to find such infringement.  This caused the Court to launch into a discussion to distinguish trademark/trade dress infringement from design patent infringement, noting that the presence of a logo/labeling on a product helps to avoid consumer confusion in trademark law, but design patent infringement “does not consider consumer-confusion as to source” so that infringement is “not avoided by labeling”, curiously citing the 1993 LA Gear v. Thom McAn case in support (“A would-be infringer should not escape liability for design patent infringement if a design is copied but labeled with its name”).   

Yes, there are certainly differences between trademark/trade dress law and design patent law when it comes to determining infringement.  And it’s clear that in trademark law labeling can help to avoid a likelihood of confusion.  But it is hard for this writer to distinguish the L.A. Gear case – where the infringer used its brand BALLOONS on the side of its shoe - from this one where Serius used it’s logo (including its brand “Serius”) on its products.  Nevertheless, the Federal Circuit – and Columbia - was stuck with the Court’s decision in the first appeal (Columbia I) where it found that its precedent, i.e., the L.A. Gear case, “does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between” a claimed and accused design.

Indeed, the Court said, it would be improper “to ignore elements of the accused design entirely, simply because those elements included the name of the [accused infringer].”

Adding insult to injury, the Court said:  “… just because a logo’s potential to eliminate confusion as to source is irrelevant to design-patent infringement, its potential to render an accused design dissimilar to the patented one – maybe even enough to establish non-infringement as a matter of law – should not be discounted.” (emphasis added). This is an open invitation for lower courts to grant summary judgment of non-infringement simply because an accused infringer includes its logo on its products. 

After analyzing the propriety of the jury instructions, the Court said it was “not insensitive to Columbia’s overarching concern” stating further “In design patent infringement cases involving logos, we appreciate the potential for a jury to be led astray and mistakenly conflate the significance of a logo’s source-identifying function with whatever impact it might have on a comparison of the designs.”  Ultimately, the Court left it up to the trial judge to determine whether and when to provide clarification of this issue to the jury.

Of course, just as happened in the second trial in this case, once the district court instructs the jury by quoting the language of the Federal Circuit in Columbia I, it’s game over.

(note to infringers:  it’s the logo, stupid.)

CRITICAL DESIGN PATENT CASE: LKQ SUBMITS OPENING BRIEF IN LKQ v. GM, WHILE VARIOUS AMICI FILE BRIEFS IN SUPPORT OF LKQ, AND OTHERS WHICH SUPPORT NEITHER PARTY

As many of you are no doubt aware, the U.S. Court of Appeals for the Federal Circuit on June 30, 2023 granted a rehearing en banc in the LKQ v. GM design patent case.  The rehearing Order focused on the issue of whether the Supreme Court’s decision in KSR v. Teleflex, involving the analysis of obviousness of a utility patent, also applies to design patents.  This squarely places the seminal case of In re Rosen in the Court’s crosshairs, namely, does it need to be overturned or abrogated in light of KSR.  The Federal Circuit’s original decisions in the case and a summary of the issues in the en banc Order were discussed in my prior blog posts.

Since then, LKQ has filed its opening brief.  A number of amicus curiae briefs have also been filed, some supporting LKQ and some supporting neither party.  Among the latter group, the brief submitted by the United States (and the USPTO), through the Department of Justice, provides some substance that the Court may ultimately adopt, since deference may be given to the government’s position (as it was in Samsung v. Apple).  The government’s argument is summarized in its brief thusly:

“There is no question that the principles the Supreme Court has announced regarding § 103, including the Graham factors and KSR’s emphasis on the need for an “expansive and flexible” approach, apply to design patents. The only question is how those principles should apply. While this Court’s Rosen-Durling test reflects helpful insights that help guard against the improper use of hindsight in the obviousness inquiry, it has become overly restrictive in several respects, and should be reformulated to reflect the expansive and flexible principles the Supreme Court has articulated in the utility-patent context.

“The United States therefore urges the Court to adopt a test that preserves the basic Rosen-Durling framework but replaces Rosen’s “basically the same” terminology with language directing the examiner or other factfinder to inquire whether there is a suitable starting point or base reference broadly having a similar overall visual effect as the claimed design. The Court should make clear that the lack of such a reference should not cut off the obviousness inquiry but may signal that the obviousness case is not particularly strong. The Court should also eliminate Durling’s “so-related” requirement in order to allow the decisionmaker to take into account the ordinarily skilled designer’s experience, creativity, and common sense, when considering combinations involving the base reference. 

“Under such an approach, at each step of the inquiry, the decisionmaker should consider the claimed design as a whole and take into account not just the ordinarily skilled designer’s experience, creativity, and common sense, but also may consider factors including what market demands and industry customs exist in the design community, which ornamental features are commonplace in the relevant field, the extent to which ornamental features are motivated by functional considerations, and whether industry designers face similar design problems as other industries or otherwise look to other industries for design ideas.”

Also filed in support of neither party was an amicus brief by the Institute for Design Science and Public Policy, written by noted designer Charles Mauro and myself and endorsed by 36 distinguished industrial designers, that focused on the third question asked by the Court in its en banc Order, namely: 

“If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?”

The brief summarizes its arguments as follows:

“Design patents are an extraordinarily important form of intellectual property. Their importance continues to grow because the marketplace and social interactions more generally are increasingly driven byvisual information and cues. For that reason, the present case is a critical opportunity for the Court to make several needed adjustments to design patent law to ensure that the law aligns with the role of designs in the marketplace and how designs are developed and perceived. 

“First, a deeper understanding of the design process and how design innovation functions in the marketplace is a necessary predicate to answering the Court’s en banc questions. The design process’s main objective is to create innovation that is distinguishable from other designs and which is attractive to consumers. Empirical research has expanded the understanding that neither designers nor consumers view product designs as an assemblage of individual parts. Studies have likewise confirmed that an experienced designer perceives designs differently than the average consumer—the latter of which is the intended target/user of design innovation.

“Second, that experiential foundation of design innovation underscores several deficiencies with current design-patent law—one being the open question of whether the “ordinary observer” test should apply to the obviousness analysis. Precedent shows how this open question developed, and the Court now has an opportunity with this case to clarify the applicable standard for assessing obviousness of design patents.

“Third, the Court should clarify that the ordinary observer—not the ordinary designer—applies to deciding nonobviousness of design patents. This clarification would remedy the status quo, which leads to anomalous outcomes between patentability and infringement. Applying the ordinary observer test also aligns with the real-world understanding and application of design innovation.

“Fourth, the novelty analysis for designs should be restored to its traditional and statutory basis. Correctly applying the ordinary observer for both anticipation and obviousness leads to the anomalous outcome where both analyses reduce to the same effective test, with anticipation using “substantially the same” and obviousness using “basically the same.” The answer is to restore the anticipation analysis to its classical formulation—requiring identicality to find a lack of novelty.

“Fifth, the Court should largely retain the Rosen two-step test for analyzing obviousness, but the second step should be eliminated or restricted to narrow circumstances. This approach aligns the obviousness analysis with how designers and consumers view product designs—not as an assemblage of individual parts but as a holistic perception. Secondary references should be used not at all or only in very circumscribed situations where the differences between the claimed design and the prior art are de minimis, and such differences are shown in one or more products in the exact same category of products as the claimed design.

“Finally, Amici provide concise answers to the Court’s en banc questions.

“The present brief focuses primarily on if and how the Rosen-Durling test should be modified, and Amici also provide their experienced perspective on the additional en banc questions.”

GM’s brief is due October 12, 2023, and amicus briefs supporting GM are due within 14 days (October 26th if GM files on the 12th).  Stay tuned for futher developments.

AN OBVIOUS WAY TO RESOLVE THE DESIGN PATENT NON-OBVIOUSNESS PROBLEM

Is there a better way to protect designs that would take the problem of non-obviousness out of the equation?  You betcha!

As background, as you likely know the Federal Circuit has granted an en banc rehearing in the LKQ v. GM case.  The rehearing raises the significant issue of whether the long-standing test for design patent non-obviousness, as enunciated in the seminal In re Rosen and Durling v. Spectrum Furniture cases, should be changed or overruled in view of the Supreme Court’s KSR case which involved only utility patent non-obviousness.  On its face, this seems to be a ridiculous proposition, since as aptly pointed out by concurring Judges Lourie and Stark in the initial LKQ opinion, utility patents and design patents are such different animals that it makes total sense that the tests for non-obviousness should be different for these distinct forms of intellectual property.

As pointed out in my previous blog post, changing the 40-year-old Rosen standard and the 30 year old Durling standard would have the effect of throwing up for grabs the validity of about 400,000 unexpired design patents that were examined and issued based on Rosen and Durling.  As Laurel & Hardy might comment to the court: what a mess you’ve gotten us into.

There are two questions one must ask.  First, what does it actually mean for a visual design to be “non-obvious” over the prior art?  Second, are design patents the best way to protect industrial designs?

Since the Federal Circuit and numerous amicus briefs will soon address the first question, this blog post will focus on the second question.

The answer to how best to protect industrial designs is neither new nor easy. One scholar has characterized the seemingly intractable problem of protecting industrial designs as “the world’s oldest intellectual property dilemma.” (Graeme B. Dinwoodie, Federalized Functionalism: The Future of Design Protection in the European Union, 24 AIPLA Q.J. 611, 618 (1996)).  Great minds have given great thought to solving this problem by drafting and introducing legislation, organizing ad hoc coalitions, and testifying before Congress, including: Hon. Giles S. Rich, Alan Latman, Henry D. Williams, Pasquale J. Federico, Cooper Woodring, Senator Herman Talmadge, Congressman Carlos Moorhead, and several Registers of Copyright (e.g., Thorvald Solberg, Arthur Fisher, Barbara Ringer, and Ralph Oman).

Absent some new approach to protecting industrial designs, we are left with the design patent system, one which, through an unfortunate accident of history, was shoehorned into the utility patent system (35 USC 101 et seq) that was crafted largely to protect functional and utilitarian features of products rather than their visual features that were left to design patents.  There are many sections of 35 USC that simply make no sense when it comes to design patent subject matter, and non-obviousness (35 USC 103) is one of them.

What’s the answer?  I posit that adopting a new system for registering designs (instead of examining them) should be given serious consideration.  Two of the main advantages of a design registration system, such as the one used in the European Union, are that it would be faster and cheaper than our current system that requires design patent applications to be examined by the USPTO for novelty, nonobviousness, written description requirements, functionality, etc.  Recently a lot of time has been spent to determining the “article  of manufacture” to which the patented design must be applied, as required by 35 USC 171.  Clearly, our design patent examination system soaks an incredible amount of time and money.  No design patent practitioner could say otherwise.  And after the design patent applicant jumps through all those hoops, all of the same issues involving patentability can then be raised again as a defense in an infringement suit to enforce the patent.   Why not do it once?  Issue a quick and relatively inexpensive design registration, and then if it comes time to enforce it, let the accused infringer raise all the invalidity defenses it wants.

This is a clear way to resolve the design patent nonobviousness brouhaha.  I believe that a design registration system would better serve designers, their employers and clients, and the involved government agencies. 

I am not alone in this belief.

The late, great Judge Giles Rich spoke directly about this in the seminal case of In re Nalbandian 661 F.2d 1214 (C.C.P.A. 1981) [note:  the C.C.P.A. was the predecessor court to the Federal Circuit].  The main issue in Nalbandian was whether the person judging non-obviousness should be an ordinary observer or ordinary designer, the court deciding on the latter.

In his concurring opinion, the legendary Judge Rich, intimately involved in design protection, not only questioned the wisdom of using non-obviousness as a measure for determining patentability of designs, but offered a sensible, workable solution:  adopt a design registration system.

Some form of design registration system has been advocated since 1914 when a group called the Design Registration League (which included stove manufacturers, Eli Lilly & Co., Meinecke & Co., Cadillac Motor Car Co., and pocket watch, lace and embroidery manufacturers) went before Congress to propose amending the copyright statute to protect industrial designs using a registration system.  It bears serious consideration today, especially in view of the LKQ brouhaha.

Judge Rich’s entire quote from Nalbandian is worthy of reading.  He said:

“The real problem … [is] … the necessity under Title 35 of finding non-obviousness in a design. (emphasis added). The problem long antedates 1952 and its Patent Act and existed from the beginning, the pre-1952 test being the presence of "invention" in a design. The problem was well known to the drafters of the 1952 Act (of which I was one) and it was also known that many prior legislative efforts had been made to solve it. When work on revision of the patent statutes began in 1950, a deliberate decision was made not to attempt any solution of the "controversial design problem" but simply to retain the substance of the existing design patent statute and attack the design problem at a later date, after the new Title 35 had been enacted.  Records I made in the mid 50's show that, beginning in 1914, some 45 bills were introduced in the House and Senate directed to some improved form of protection for designs. Many of these bills were, of course, duplicates, substantially the same bill being introduced in each house or reintroduced in successive years. Those interested in the history can examine Barbara A. Ringer's 70-page Bibliography on Design Protection published for Copyright Office use June 1, 1955, and an enlarged 160-page version or "supplement" compiled by W. Strauss, Varmer, Caruthers, and Berger on June 1, 1959, bearing the same title. Fabulous amounts of time and effort have been poured into solving the design protection problem with, to date, no legislative solution. See also Kelsey M. Mott's two-installment article The Standard of Ornamentality in the United States Design Patent Law, 48 ABA J. 548, 643 (June, July 1962). Thus it was that the patentability of designs came to be subject to the new § 103 which was written with an eye to the kinds of inventions encompassed by § 101 with no thought at all of how it might affect designs. (emphasis added). Therefore, the design protection problem was in no way made better; perhaps it was made worse. The intention of the drafters of the 1952 Patent Act to tackle the design protection problem was carried out, by both the private and public sectors, commencing in 1954, by a new "Coordinating Committee" of which I was chairman, and by 1957 new legislation was introduced in the 85th Congress, 1st Session in the form of Willis Bill H.R. 8873. In the 86th Congress, 1st Session, S. 2075 was introduced by Senators O'Mahoney, Wiley, and Hart, being the same bill in substance. From that time on, the legislative effort was continuous until the bill became Title III of the Copyright Revision Bills, later became Title II, and finally was jettisoned to facilitate passage of the main bill, the Act of October 19, 1976, Pub.L. No. 94-553, now 17 U.S.C. § 101 et seq. (1977). Congressmen said they would deal with designs later. The point of this review is to call attention to the resulting presently pending legislation, H.R. 20, 97th Congress, 1st Session, introduced January 5, 1981, by Mr. Railsback, a bill "To amend the copyright law, title 17 of the United States Code, to provide for protection of ornamental designs of useful articles." The present case and its companion, In re Spreter, 661 F.2d 1220 (Cust. Pat.App.), concurrently decided, are but the latest examples of the need for a law tailored to the problems of designers, of their employers and clients in the business world, and of the government agencies now concerned. (emphasis added). The now pending legislation is substantially the same bill introduced in 1957, after the refining process of 24 years of legislative consideration. It is time to pass it and get the impossible issue of obviousness in design patentability cases off the backs of the courts and the Patent and Trademark Office, giving some sense of certainty to the business world of what designs can be protected and how. (emphasis added).”  

He went on to say:

“Commissioner of Patents and Trademarks Gerald Mossinghoff in his maiden speech to the ABA Patent, Trademark and Copyright Law Section in New Orleans on August 8, 1981, said:  “We are again urging enactment of an inexpensive and effective form of registration protection for designs and, specifically, we are supporting H.R. 20 introduced by Congressman Railsback last January largely because the concept of unobviousness is not well suited to ornamental designs. We believe a registration system, such as that contemplated in H.R. 20, would serve industry better at lower cost. [Judge Rich’s emphasis.] The bar would do well to devote its energies to backing this effort of the PTO rather than pursuing appeals such as these which may sometimes result in patents to "extraordinary" designers whose patents, as the Commissioner also pointed out, may then suffer a 70% mortality rate in the courts at the hands of judges reviewing the § 103 unobviousness of the designs. (emphasis added).”

In 1987 Judge Rich testified in the US Senate hearings in favor of a sui generis industrial design law: “The main purpose of the bills before you is to create a more equitable, practical and workable law for the protection of ornamental designs than the inequitable conglomerate we now have, namely, inadequate patents, overprotective copyright and a great middle ground still inadequately provided for.” (The Industrial Innovation and Technology Act: Hearings on S. 791 Before the Subcomm. on Patents, Copyrights and Trademarks of the Senate Comm. on the Judiciary. 100th Cong., 22 (1987)).

The failed efforts to create a design registration system referred to by Judge Rich carried through to the early 1990s when the last such bills were introduced (H.R. 902, H.R. 3017, H.R. 3499).  They failed to pass, due in large part to staunch opposition from the auto parts knock-off industry.

Then something interesting happened. The boat industry, in desperate need of protection against rampant knocking off of vessel hulls, resurrected the most recent drafts of the failed design registration bills and cleverly defined “vessel hulls” as the designs to be protected.  This resulted in legislation directed only to the registration of vessel hulls.  That bill, now known as the Vessel Hull Design Protection Act of 1998, 17 U.S.C. 1301 et seq., (hereafter the Vessel Hull Act) passed Congress without objection.  The U.S. Copyright Office was charged with implementing the system.  Although infrequently used, it is a template for a successful design registration system, having its roots in legislation introduced periodically in the previous 75 years, including those spearheaded by Judge Rich. 

Then another curious thing happened.  Several years after implementation of the Vessel Hull Act, the fashion design industry desperately needed to protect against the copying of high fashion, Paris-runway designs that were knocked off within weeks of introduction. Quick protection was critical since the half-life of fashion designs was perhaps 3 months.  The fashion industry saw the success of the Vessel Hull Act, and got legislation introduced (The Innovative Design Protection and Piracy Prevention Act [H.R. 2511]) to amend the Vessel Hull Act to add fashion designs to vessel hulls as the two classes of goods that could be registered. However, the Fashion Bill, as it was called, faced stiff opposition from the California-based knockoff clothing industry, and despite being re-introduced over several years, and having had several Congressional hearings, never passed.

The Vessel Hull Act exists and operates today as this country’s only design registration system (excluding the rather unrelated Semiconductor Chip Protection Act of 1984 which upon registration protects the layout of an integrated circuit). 

Clearly, the Vessel Hull Act – already a law - is a template of what can be done to register all industrial designs, by simply substituting “designs” for “vessel hulls”. 

Enactment of a design registration system is a ready alternative to answering  the unanswerable question of what a non-obvious design is. And a registration system will be easy to implement since it can simply be an amendment to a design protection law that’s already on the books.

It’s obviously time to move away from nonobviousness. 

I will follow up this post in a few days to describe my previous efforts to promote a design registration system.

THE USPTO FAILS TO CONSIDER COMPARISON PRIOR ART IN ANTICIPATION REJECTIONS

There is a serious problem in the USPTO design examination procedure regarding the failure to cite comparison prior art when rejecting a design patent claim based on 35 USC 102 (anticipation).

I am not aware whether the USPTO has ever applied a purported 102 reference to the claimed design by comparing them in the context of the prior art. This is contrary to established case law as summarized in the en banc Egyptian Goddess decision.

Interestingly, the MPEP 1504.02 correctly says:

          “For anticipation to be found, the claimed design and the prior art design must be substantially the same. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)). In International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239-40, 93 USPQ2d 1001, 1005 (Fed. Cir. 2009), the Federal Circuit held that the ordinary observer test, the test used for infringement, is “the sole test for anticipation.” Under the ordinary observer test, “‘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.’” Gorham, 81 U.S. at 528. In Egyptian Goddess, an en banc panel of the Federal Circuit "characteriz[ed] the ordinary observer as being ‘deemed to view the differences between the patented design and the accused product in the context of the prior art.’” Seaway, 589 F.3d at 1239-40, 93 USPQ2d at 1005, quoting Egyptian Goddess Inc. v. Swissa Inc.,[stet] 543 F.3d 665, 676, 88 USPQ2d 1658, 1666-67 (Fed. Cir. 2008) (en banc). The court also explained that “‘when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.’” Id. (emphasis added).”

 In Egyptian Goddess, Inc. v. Swisa Inc. (Fed. Cir. 2008), the court clearly stated the importance of considering the prior art in determining infringement.  The court said:

“In [two early cases], the courts emphasized that the defendant's product would appear different from the plaintiff's protected design to an ordinary observer aware of the great number of closely similar prior art designs. In Applied Arts, the accused ash tray would not appear to be the same as the claimed ash tray as long as "similitude of appearance is . . . judged by the scope of the patent in relation to the prior art." 67 F.2d at 429. And in Sears, Roebuck, the court concluded that the accused fruit juicer would not appear similar to the claimed design if the fact-finder performed the required "comparison of the features of the patented designs with the prior art and with the accused design." 140 F.2d at 396. Not only is this approach consistent with the precedents discussed above, but it makes sense as a matter of logic as well. Particularly in close cases, it can be difficult to answer the question whether one thing is like another without being given a frame of reference. The context in which the claimed and accused designs are compared, i.e., the background prior art, provides such a frame of reference and is therefore often useful in the process of comparison.  (emphasis added).”

The entire tenor of Egyptian Goddess is that under the ordinary observer test, the question of whether the patented and accused designs are “substantially the same” must be made “in the context of the prior art”, i.e., with due consideration of comparison prior art.  According to the court: “[I]t makes sense as a matter of logic…. it can be difficult to answer the question whether one thing is like another without being given a frame of reference.”

As noted above, in deciding questions of anticipation, MPEP 1504.02 says: [T]he Federal Circuit held [in International Seaway] that the ordinary observer test, the test used for infringement, is “the sole test for anticipation.”  

However, despite citing Egyptian’s “in the context of the prior art” in MPEP 1504.02, there is no further explanation in the MPEP of whether or how an examiner should take comparison prior art into account in making an anticipation rejection.

Egyptian Goddess did excuse consideration of the prior art under one condition:

          “In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear "substantially the same" to the ordinary observer, as required by Gorham. (emphasis added).”

Thus, according to Egyptian, one need not consider the prior art if two designs are “sufficiently distinct”.  But obviously if a claimed design is “sufficiently distinct” from a potential 102 reference, there is no ground for a 102 rejection.

The Federal Circuit followed the “sufficiently distinct quote by saying:

          “In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art, as in many of the cases discussed above and in the case at bar. (emphasis added).”

Again, the court emphasized the importance of considering comparison prior art in infringement determinations, and by extension in anticipation rejections during prosecution.

As evidence of the USPTO’s failure, following is the actual text of an anticipation rejection that occurred during the prosecution of U.S. Pat. No. D770,027 (USSN 29/531,907) claiming a ceiling fan.  The claimed design and applied 102 Haiku reference are as shown below:

USPTO 102 Rejection (US Pat. No. D770,027)

The rejection from the examiner’s Office action in its entirety follows:

          “The claim is rejected under 35 USC 102(a)(1) as being clearly anticipated by “Haiku 5 Foot Ceiling Fan” reference as seen on YouTube because the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

           “The appearance of the Haiku 5 Foot Ceiling Fan is substantially the same as that of the claimed design.  The ordinary observer test is the sole test for anticipation. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240 (Fed. Cir. 2009).

           “Two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives, to purchase an article having one design supposing it to be the other.” Door-Master Corp. v. Yorktowne Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001) (citing Gorham Co. v. White, 81 U.S. 511, 528 (1871)).

          “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as ‘minor differences between a patented and an accused article’s design cannot, and shall not, prevent a finding of infringement’, so too minor differences cannot prevent a finding of anticipation.” Int’l Seaway, 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).”

This is not an isolated occurrence;  the same language was used in the same application based on two other 102 rejections..

Regardless of the merits of this rejection, it’s clear that comparison prior art was not considered.

There would be many benefits if the USPTO had to take into account comparison prior art in making 102 rejections.  For one thing, the subjectivity inherent in current 102 rejections would disappear. As evidenced by the excerpt above (“The appearance of the Haiku 5 Foot Ceiling Fan is substantially the same as that of the claimed design”)  examiners now simply have to allege that the 102 reference and the claimed design are “substantially the same”, which is rife with subjectivity.  If they had to consider comparison prior art, it would bring some objectivity to the rejection, a frame of reference to put “substantially the same” in context, as required by Egyptian Goddess. 

Also, 102 rejections allow examiners to avoid having to make 103 rejections which require examiners to undertake a more rigorous analysis. A 103 rejection necessitates that they identify a primary reference which is “basically the same” as the claimed design (but keep your eye on the currently pending en banc case of LKQ v. GM case that is reconsidering the basis for design patent obviousness).

As an aside, I have long been a critic of International Seaway that equated the test for anticipation with the test for infringement. I’ve published an article about it:  “Design Patents Are Sinking in International Seaway”.  And Seaway puts the USPTO in the unheard of position of essentially deciding whether one design infringes another.

In summary, the failure of the USPTO to take into account comparison prior art in anticipation rejections of a design patent claim under 35 USC 102, as evidenced by the foregoing, is simply wrong. The USPTO needs to do something about it.