ARE YOU DOOMED BECAUSE YOUR PRINTED DESIGN PATENT HAS TERRIBLE DRAWINGS?

This case is significant only because the USPTO cannot seem to print the drawings in issued design patents with a sufficient degree of clarity.  For many design patents, there is a huge degradation in image quality between the drawings originally filed by an applicant and those that are printed in the issued patent.  This has been a longstanding problem.

Originally filed high-resolution drawings are routinely stored in a USPTO database called the Supplemental Complex Repository for Examiners, or SCORE.  Design patent Examiners use the SCORE drawings to examine the application.  Once the patent is allowed and printed, many of the high resolution SCORE drawings have undergone a presumably unintended metamorphosis into unintelligible, highly pixilated drawings, where it is frequently impossible to distinguish between a broken line and a solid line; this is important, obviously, because solid lines define the claimed design, and broken lines define unclaimed subject matter.  For design patent applications filed with high quality photographic images, the images in the printed patents frequently are out of focus, out of contrast, and simply look awful.  Many examples abound.

Woe is the patent litigator who must assert one of these terribly printed design patents in court.  How is the judge supposed to determine the meaning and scope of a design patent claim that on its face, i.e., on the face of the printed patent, have drawings that are unintelligible and thus arguably indefinite? 

One court has offered a path out of this mess.  In Panasonic Corp. v. Getac Technology Corp. et al., the district court for the Central District of California considered whether to incorporate the SCORE drawings of the 4 design patents at issue into its claim construction.  

In the illustrations below, on top is FIG. 19 of the original SCORE drawings of Panasonic’s U.S. Pat. No. D766,232, while on the bottom is the same figure as printed in the ‘232 patent.  The problem is manifest. 

The defendants contended that the patents were indefinite because of the lack of clarity in the printed patent drawings.  The patentee Panasonic responded by asking the court to rely on the SCORE images to determine the scope of the patents in issue.   

The Defendants argued that the court could not substitute file history drawings for patent figures, and cannot correct any errors in a patent that are not evident on the face of the patent.  More particularly, the Defendants argued that an ordinary observer of a design patent would not have understood that the SCORE drawings (and not the figures on the issued patent) defined the scope of the claim because there was no mention of other drawings in the patent specification.  Defendants also argued that Panasonic chose not to correct its patents using a Certificate of Correction, choosing instead to sue the Defendants on patents “they knew were defective”. 

There is no dispute, the court said, that the SCORE drawings are part of the prosecution histories, and that the Patent Act requires “a patent’s claims, viewed in light of the specification and prosecution history” to “inform those skilled in the art about the scope of the invention with reasonable certainty”, citing the 2014 Supreme Court decision of Nautilus, Inc. v. Biosig Instruments, Inc.  

Interestingly, the court cited the test from In re Maatita which said that a design patent is invalid for indefiniteness under Sec. 112 “if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and the visual disclosure”.  The court also relied on the Federal Circuit decision Phillips v. AWH Corp. that said claim construction is provided in view of “the claims themselves, the remainder of the specification, [and] the prosecution history.”   

The district court had no trouble in construing the claim of the ‘232 patent as follows: 

“The ornamental design for a portable computer, as shown and described in Figures 1-20 of the patent and Figures 1-20 located in the D’232 Patent file history and available through the Supplemental Complex Repository for Examiners (“SCORE”) database.  The broken lines shown in the figures represent environment only and form no part of the claimed design.”  

It made similar constructions for the other 3 patents in suit. 

Score one for the patentee!