HON. JUDGE PAULINE NEWMAN, DESPITE CURRENT EFFORTS TO REMOVE HER FROM THE BENCH BASED ON HER AGE, HAS A STELLAR DESIGN PATENT RECORD

As written up recently in a Patently-O blog:

“The recent controversy at the Court of Appeals for the Federal Circuit involving Chief Judge Kimberly Moore and Judge Pauline Newman has raised concerns and garnered attention. The Court has now confirmed the rumors about Judge Moore’s actions to remove Judge Newman [age 95] from an active role on the bench. According to a statement of court and two published orders, it seems that Chief Judge Moore also has the support of her fellow judges in this matter.

Judge Newman’s obstinance appears to be rooted in her belief that she is “the only person [on the Court] who care[s] about the patent system and innovation policy.”  Throughout her 39 years on the Court, Judge Newman has been a stalwart supporter of strong patent rights.”

In my view Judge Newman has been a blessing to design patent law. Whether writing in the majority, or in dissent (with impeccably correct opinions), design patents would be in an even bigger mess than they are now had it not been for her analysis. Just to mention a few:

 LA Gear v. Thom McAn involving a logo placed on the side of the accused design [an issue that continues to be hotly contested in the pending Columbia v. Serius case] (“Design patent infringement relates solely to the patented design, and does not require proof of unfair competition in the marketplace… or allow avoidance of infringement by labelling.”).

Best Lock v. Ilco Unican involving functionality of a key blade blank (in dissent: “The design of the key profile is not removed from access to the design statute because the key fits a matching keyway. That two articles are designed in harmony does not deprive the design of access to the design patent law. The design of the key profile is not determined by the function of the key to fit the lock. In the case at bar there are said to be “thousands” of alternative key blade profiles.”).

In re Daniels involving continuation practice (“The Board was incorrect in holding that any change in the design defeats a priority claim as a matter of law. As for any application asserting a priority claim, § 120 requires that the subject matter for which priority is requested must be disclosed in accordance with the requirements of § 112. A wealth of precedent guides the application of this statute. Applying the guidance of precedent, as we have discussed, the later claimed subject matter is contained in the earlier application. The leaf ornamentation in the parent application, superimposed upon the design of the leecher itself, does not obscure that design, which is fully shown in the parent application drawings. On the correct law, it must be concluded that Mr. Daniels possessed the invention that is claimed in the continuation application, and that he is entitled to claim priority under § 120.”).

Revision Miliary v. Balboa involving the lower court’s refusal to consider relevant prior art in determining infringement on the basis that the designs were essentially sufficiently distinct (“Although individual features may indeed serve in assessing the “impact on the overall appearance,” in determining whether apparently minor differences between specific features would be recognized as distinguishing the designs, it is often helpful to refer to any prior art with which the ordinary observer would reasonably be familiar. As stated in Egyptian Goddess, “the background prior art, provides … a frame of reference and is therefore often useful in the process of comparison.” The district court did not consider the prior art context in which the ordinary observer test is applied. Although the district court stated that “[b]ecause this is not a particularly close case, the court does not need prior art as a ‘frame of reference’ to apply the ‘ordinary observer test,’ ” the record suggests otherwise.”).

Campbell Soup v. Gamon, involving a Sec. 103 obviousness rejection where a major claimed design element [a cylindrical can] was missing from the purported primary reference to Linz: (“My colleagues hold that the designs are substantially the same despite the absence in Linz of the cylindrical object, reasoning that it may be assumed that the Linz dispenser is for a cylindrical object. However, … the cylindrical object is a major design component. The absence from the primary reference of a major design component cannot be deemed insubstantial… My colleagues err in design patent law—in modifying the Linz design by adding a can, in order to create a design more similar to the Gamon design.”)

I should only hope to live to age 95 and have made as significant contributions to the field of design patent law as has Judge Newman. No matter what lies ahead, I tip my hat to her.