Over the past year, district courts across

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1 Design Patent Enforcement in 2014 By Steven M. GruSkin and MarGaret M. WelSh Over the past year, district courts across the united States and the Federal circuit issued numerous opinions relevant to design patents. While the old mantra that design patents have no scope 1 has been seemingly set aside, showing infringement of a design patent is still not an easy burden to meet and invalidating a design patent is often a successful defense. a review of some recent court decisions should help practitioners uphold and enforce design patents, or in the alternative, dismiss alleged claims of infringement. this article highlights some of the recent case law relating to design patents, including court opinions regarding claim construction, invalidity, infringement, and remedies. CLAIM SCOPE a court confronted with a dispute regarding a design patent has a duty to construe the claims and determine the scope of the patented design. design patent claims are typically illustrated in the patent s drawings. 2 In theory, illustrations better encompass the entire patented design, and avoid placing an undue emphasis on certain features of the design. However, when determining a design patent s claim scope, courts have discretion to define a patent s claim with a written description of the features illustrated in the drawings. 3 While courts have this discretion, a review of recent cases discussed below show courts reluctance to construe design claims with a written description. OraLabs, Inc. v. Kind Group LLC In the district court of colorado, oralabs, Inc. filed a declaratory judgment action seeking a ruling of non-infringement and invalidity relating to u.s. Patent no. d644,939 which is owned by Kind Group llc and claims a design for a sphericallyshaped lip balm. at issue before the court in OraLabs, Inc. v. Kind Group LLC, 4 was the claim construction of the 939 patent. Kind Group argues that a written description of the claimed design is not necessary because the drawings are easily understandable, and the drawings of the 939 patent should be compared directly to drawings of the accused products. on the other hand, oralabs argues that a verbal construction is needed because it is necessary (1) to resolve differences in the drawings, specifically FIG. 5 (shown below) does not have a divot as shown in FIG. 1, (2) to identify features that distinguish the design from prior art, and (3) to clarify that the claimed design does not include features within the dotted lines. the court noted that it must determine whether a verbal construction is necessary to resolve ambiguities in the drawings, to distinguish the claimed design from the prior art, and to facilitate a ruling on patent invalidity. on these points above, the court agreed with Kind Group that a verbal construction was not necessary because (1) the drawings were not inconsistent as FIG. 5 showed a side elevation in which the divot may not be visible, (2) numerous prior art designs do not necessarily warrant a verbal construction, and (3) a verbal claim construction is not needed for an invalidity analysis because the court may analyze the visual impression of the design in its invalidity analysis. thus, on this claim construction ruling, the court held that a verbal claim construction was not necessary and the claims would be defined by the drawings. Interestingly, as shown from the comparison below, the oralabs product has minor differences from the clamed design, such as a slightly different shaped lip balm, and a written claim construction could be important for the infringement analysis in this case. Blackberry Limited v. Typo Products LLC Similar to oralabs, the court in Blackberry Limited v. Typo Products LLC 5 also found that the figures illustrated the claim s scope and a verbal construction was not needed. Blackberry limited is the owner of u.s. Patent no. d685,775 ( the 775 patent ) relating to a keyboard of a handheld device. FIG. 2 of the 775 patent is shown below. on January 3, 2014, Blackberry sued typo Products llc for allegedly infringing the 775 patent with an iphone case which has a physical keyboard below. 6 on January 22, 2014, Blackberry filed a motion for a preliminary injunction seeking to prevent typo from selling its product. one of the issues before the u.s. district court for the northern district of california when analyzing the preliminary injunction request was the claim scope of the 775 patent. Blackberry argued that the court could conduct its infringement analysis by comparing the typo keyboard directly to the drawings in the 775 patent and the BlackBerry Q10, which embodies the 775 Patent. 7 on the other hand, typo argued that a verbal construction was required based on the prosecution history of the 775 which distinguished the 775 patent over prior art, in part, because of the design and position of the ridges separating the rows of keys. the court disagreed with typo and noted that the prosecution history did not alter the claim scope because the claims were not changed during the prosecution. the court further noted that any key distinctions between the 775 patent and the prior art were issues for infringement and invalidity, not claim construction. the court held that 24 Intellectual ProPerty today FeBruary, 2015

2 written claim construction is neither necessary nor helpful in this case and conducted its analysis by comparing typo s product with the drawings in the 775 patent. as discussed in more detail below, the court in this case, granted Blackberry s motion for a preliminary injunction. Carlini Enterprises, Inc. v. Paul Yaffe Design, Inc. lastly, in Carlini Enterprises, Inc. v. Paul Yaffe Design, Inc., 8 the u.s. district court for the central district of california referred to the figures in the design patents-in-suit for claim construction. carlini is owner of u.s. Patent nos. d629,343 and d604,212 claiming a handle bar for a motorcycle and alleges that yaffe s Gentle curve oem Monkey Bars custom infringe the patents. at issue in this case was whether claim construction was warranted to distinguish the ornamental features from the functional features of the claimed design. a design patent may not be infringed if an accused infringer copies the functional aspects of the design patent and not the ornamental aspects. 9 In Carlini, the court held that a verbal construction distinguishing the functional features was not warranted because there are essentially no features of the handlebar designs that are purely utilitarian. the court noted that while the handlebar has functional features, the wide variety of shapes, angles, and sizes of handle bars illustrate that the handlebars are ornamental. Practitioner Tip: In view of the above cases, practitioners will particularly benefit from making sure that drawings filed in design patent application are clear and accurate, as a verbal description will most likely not modify what is actually shown in the drawings. INVALIDITY a patent is presumed valid after it is granted, but may be held invalid by clear and convincing evidence in a district court litigation. a patent may be determined to be invalid, for example, if prior art (such as an earlier patent, printed publication, or actual product) discloses (i.e., anticipates) the invention or would have rendered the invention obvious. a design patent may be determined to be invalid as being anticipated if the accused design has the same overall visual impression of the claimed design taking into account the significant differences, if any, between the two designs, and not trivial differences as recognized by an ordinary observer. 10 also, a patent may be determined to be invalid as obvious (i.e., if not anticipated) if a single primary reference has basically the same characteristics as the claimed design; and an ordinary designer would modify the primary reference with a secondary reference to create a design that has the same overall visual appearance as the claimed design. 11 MRC Innovations, Inc v. Hunter Mfg., LLP In MRC Innovations, Inc. v. Hunter Mfg., LLP, 12 the Federal circuit affirmed the u.s. district court for the northern district of ohio s grant of summary judgment on invalidity of u.s. design Patent nos. d634,488 and d634,487. the 488 patent claims a design for a dog s football jersey and the 487 patent claims a design for a dog s baseball jersey. Summary judgment for invalidity on obviousness of a design patent is appropriate if the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors. 13 as noted above, an obviousness inquiry for a design patent entails finding a primary reference that is basically the same as the claimed design and then using a secondary reference to modify the primary reference to result in the claimed design. More than a year prior to filing the 488 patent, the inventor of said patents, sold a green pet jersey ( Prior art Jersey ) to retailers like Walmart and PetSmart. Mrc, assignee of the 488, argues that the claimed design is not basically the same as the Prior art Jersey because the claimed design has (1) a V-neck collar; (2) an interlock fabric (non-mesh) on the side portions; and (3) additional ornamental stitching on the back of the jersey. the Federal circuit disagrees with Mrc as both designs contain the same overall shape, similar fabric, and ornamental surge stitching, and uses the Prior art Jersey as a primary reference in its obviousness inquiry. after determining that the Prior art Jersey was similar enough to qualify as a primary reference, the court looked to secondary references which disclosed a V-neck and an interlocked pattern on the side portions. the court noted that when two designs are so related in their appearance, an explicit motivation to combine the designs is not necessary. the court held the 488 patent invalid and noted that additional ornamental stitching was a minor difference that did not impact the patentability of the design. Similar to the 488 patent, the Federal circuit found the 487 patent (relating to a baseball jersey for dogs) invalid as being obvious in view of prior art for dog s baseball jerseys. Practitioner Tip: Practitioners should encourage clients to apply for patent applications as early as possible (and certainly no later than the 1 year statutory bar after a first public disclosure) because, as shown from the above, an updated design may be unpatentable based on an earlier design already in the market place. High Point Design LLC v. Buyer s Direct Inc. last year, in Highpoint v. Buyer s Direct, the Federal circuit reversed and remanded the Southern district court of new york s decision granting summary judgment that d598,183 was invalid, because that court used the ordinary observer test to determine if the patent was obvious in view of the prior art, as opposed to the ordinary designer test. the Federal circuit held that the inquiry was not whether the claimed design would have been obvious to an ordinary observer, but rather to a designer who designs articles of the type involved. the difference between an ordinary observer and an ordinary designer is that an ordinary designer might be more perceptive to the nuanced differences between the prior art and the patented design, and thus in the author s view, less likely to find a given design as obvious over the prior art. In March 2014, the Southern district court of new york considered the motion for summary judgment again. Interestingly, in High Point Design LLC v. Buyer s Direct Inc., 14 the district court declined to apply the ordinary designer test in its obviousness analysis, and instead, held that the 183 Intellectual ProPerty today FeBruary,

3 patent was invalid due to anticipation using the ordinary observer test. In the initial district court ruling in 2012, the Southern district court of new york held that the 183 patent was invalid because it was obvious in light of the prior art and was primarily functional. In the obviousness analysis, the court applied a primary reference which created basically the same overall visual impression as the claimed design and then used a secondary reference to modify the primary reference. With respect to the obviousness ruling, the court held that Woolrich s footwear ( Woolrich Prior art ) sold prior to the publication of the patent rendered the claimed design obvious in combination with secondary references. Specifically, the court held that Woolrich s Penta design is indistinguishable from the drawings of the 183 patent and that the laurel Hill design while having certain differences with the Penta slipper that are insubstantial and might be referred to as streamlining, nonetheless has the precise look that an ordinary observer would think of as a physical embodiment of the drawings shown on the 183 Patent. the court recognized that the only difference between the slippers related to the sole of the slipper which is quite minor in the context of the overall slipper. For this feature, the court relied on two secondary references which disclosed small dots on the bottom of the soles, and noted that it would have been obvious for any designer to modify the prior art to include dots on the bottom of the soles as claimed. on remand, however, the Southern district court of new york noted that the court s application of the ordinary observer test makes it clear that the 183 patent was anticipated by the Woolrich slippers. 15 Specifically, the court noted that to an ordinary observer the 183 patent is the design of a slipper with a formed body, a protrusion of fuzz or fluff, and a sole with some solidity. the court noted that the Penta slipper has essentially the same visual effect of the claimed design, a slipper with a body and sole of which have some defined shape and solidity but which has a protrusion of fluff or fuzz emanating from the foot opening. Further, even the lauren Hill slipper had a structured body, a soft-looking fluff surrounding the opening of a slipper, and a sole that appears durable and fairly thick. the court noted that differences between the laurel Hill design and the claimed design, including curvatures at the front part of the shoe, would not be distinguished by an ordinary observer as they do not impact the overall visual effect. the court did not address the differences in the dots on the bottom of the sole, and thus, suggested that the dots on the bottom of the shoe did not change the overall visual impression of the shoe. Interestingly, when the Federal circuit raised the level of skill from the ordinary observer to the ordinary designer to determine obviousness, arguably it became more difficult to invalidate a design patent, since the ordinary designer is more likely to identify small differences and find them to be significant. However, the patentee must first still overcome the hurdle of anticipation. In this case, although the prior art did not have all of the same features as the claimed designed, the missing features were determined to be minor, and the court was able to apply the ordinary observer standard in an anticipation analysis. It will be interesting to see how courts distinguish between an anticipation analysis where products have the same overall visual impression (and hence the ordinary observer test applies) and an obviousness analysis where products have basically the same characteristics (and thus the ordinary designer test applies). Times Three Clothier, LLC v. Spanx, Inc. In addition to invalidity in view of prior art, a patent may also be determined to be invalid based on indefiniteness. In Times Three Clothier, LLC v. Spanx, Inc., 16 the Southern district of new york, held that d665,558 and d666,384 were invalid for indefiniteness because of inconsistencies in the patent drawings. under 35 usc 112, a patent s specification must particularly point to and distinctly claim the subject matter which the inventor regards as the invention. For a finding of invalidity due to indefiniteness of a design patent, the errors and inconsistencies in the patent drawings must be material and of such magnitude that the overall appearance of the design is unclear. 17 the 558 patent claims a garment as shown in the figures above. the court held that the drawings are inconsistent with respect to the ornamental line below the bust. FIGs. 1 and 2 show the ornamental line as being straight and horizontal in the front and back of the garment, however, FIGs. 3 and 4 show the line as angled on the left and right of the drawing. Further, the court noted that the ornamental line is a fundamental part of the claimed design, and replacing the straight line with the angled line or vice-versa would materially alter the subject matter covered by the patent. 18 thus, the court held that the design is insolubly ambiguous, and thus, invalid for indefiniteness. the 384 patent also claims a garment as shown. Specifically, the court noted that Figure 2 depicts a garment design with a back extending above the top of the side of the garment, while Figures 3 and 4 depict a garment design with a back ending at the top of the side of the garment. again, the 26 Intellectual ProPerty today FeBruary, 2015

4 court held that these inconsistencies materially altered the subject of the patent, and thus, the 384 patent was invalid for being insolubly ambiguous. Practitioner Tip: In view of Times Three Clothier, design patent practitioners are reminded of the importance of reviewing drawings carefully to check for inconsistencies. INFRINGEMENT a review of design patent cases from the past year, reveals a number of cases in which the court determined that the alleged products did not infringe the claimed patent. courts have consider infringement at different stages of litigation, such as in a motion to dismiss, summary judgment, and determining a preliminary injunction. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC Pacific coast Marine is owner of u.s. Parent no. d555,070 related to a windshield for a boat. Pacific coast sued Malibu Boats for infringement in the district court of Florida. the court granted Malibu s motion for summary judgment of non-infringement because Pacific coast was barred from its infringement claim based on prosecution history estoppel. the Federal circuit reversed the summary judgment decision in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC 19 because the accused infringing design was not within the scope of subject matter surrendered during prosecution. Specifically, Pacific coast submitted a design patent application with various embodiments as shown below. the examiner issued a restriction requirement because the multiple embodiments had a different number and shape of the holes on the side of the windshield and some of the embodiments had hatches in the center of the windshield, and thus, represented patentably distinct groups. the applicant elected an embodiment with four vent holes and a hatch as shown in FIG. 1 and cancelled FIGs as shown below. Pacific coast sued Malibu Boats for alleged infringement of its design patent for a windshield (shown below). the district court granted summary judgment of noninfringement because the applicant had surrendered the design in the accused windshield (i.e. three square-shaped vent holes). the Federal circuit recognized that Pacific coast surrendered claim scope of designs in FIGs including windshields with two side holes or no side holes. Further, the Federal circuit noted that the surrender was not made for patentability purposes in view of the prior art, yet, prosecution estoppel still applies. However, despite determining that prosecution estoppel applies, the court held that the accused design was not within the claimed scope because the applicant never surrendered the distinct embodiment of the accused design (i.e. a windshield having a hatch and three square holes). the court held that the surrender of the claim scope was limited to what was actually disclaimed (i.e. a windshield with no holes, two square holes, or four square holes without a center hatch). the Federal circuit remanded the case for further proceedings, specifically to determine if the three-hole embodiment is colorably different than the two-hole embodiment for a finding of infringement. a rehearing and rehearing en banc was denied March 27, In april 2014, the u.s. district court considered additional summary judgment motions by the parties including issues relating to inventorship. Practitioner Tip: Practitioners should carefully consider the various embodiments disclosed in a patent application because including multiple distinct embodiments may require surrendering some of the original claim scope. Further, practitioners should encourage applicants to file divisional applications to avoid losing patentable subject matter in the non-elected embodiments. Intellectual ProPerty today FeBruary,

5 Legler v. Exxel Outdoors, Inc. In the eastern district of Wisconsin, in Legler v. Exxel Outdoors, Inc., 20 the court conducted a preliminary infringement analysis and compared the accused products and the claimed design in a motion to dismiss. a complaint may be dismissed if it fails to state a claim of relief with sufficient facts. legler alleges that exxel s Inflatabed infringes its u.s. Patent no. d440,806. a comparison of the 806 patent and the Inflatabed are shown below. to show infringement under the ordinary observer test, the plaintiff must show that an ordinary observer, familiar with the prior art design, would be deceived into believing that the accused product is the same as the patented design. 21 the claim of the 806 patent recites [t]he ornamental design for a transportable and compactible sleep mat and cot cover for children, as shown and described. the court construed the patent based on the figures, however legler argued that the claim should be construed as [a] transportable and compactable sleep mat of certain design as shown in Figures 1-14 without the handle and flaps with fasteners. Given that the handles were in solid lines in the figures and the prior art illustrates several ways to make a sleep mat compact and transportable, the court included the handles in its claim construction. Further, as shown from the drawings below, exxel s Inflatabed has a Velcro clasp and does not have the handles, flaps, or fasteners or method for storage and transport like the claimed design. the court held that an ordinary observer would not be deceived into purchasing the accused product thinking it was the claimed design. thus the court dismissed legler s complaint of infringement because it failed to state a claim. Practitioner Tip: In view of Legler, practitioners should carefully review prior art before filing a patent application so as to not unnecessarily narrow the design patent s claim scope. Further, practitioners should consider possibly filing a patent that is more detailed and narrowed in scope and a patent that is more general and broader in scope, since it is not always possible to know in advance what a competitor s design might look like. Blackberry Limited v. Typo Products LLC In Blackberry v. Typo, 22 mentioned above, Blackberry filed a motion for preliminary injunction seeking to prevent typo from importing, marketing, offering to sell, or selling its iphone case with a physical keyboard. For a preliminary injunction, the plaintiff must show a likelihood of success on the merits, and thus, must prove that there is a likelihood for a finding of infringement. Blackberry asserted that the similarities between typo s products and its patent created the impression of the same design. For similarities, Blackberry noted the equally sized frets (i.e. dividers) above the rows of keys, three rows of ten rectangular keys, keys having contoured surfaces, and a lower row of keys that has a bottom edge that roughly follows the curvature of the bottom edge. on the other hand, typo argued that the designs are different, for example, because the frets between the keys are thinner and narrower, the keyboard has a backlight, and the frets do not extend past the keys. the court held that the differences do not alter the overall impression of the two designs as being the same. the only difference that the court noted as potentially changing the overall appearance of the design was the fact that the typo keyboard was significantly thinner than the claimed design. However, even with this difference the court noted that the claimed design is not limited to a particular size and the relative sizes between features within the respective products are more important than the different sizes of the products. Further, the court rejected typo s argument that the products did not infringe because the products were merely cases (and not an entire phone), because only the keyboard of the phone was claimed. Showing that the typo product infringed the patent, and showing that a preliminary injunction would prevent irreparable harm, and favor in the balance of equities and the public interest, the court granted BlackBerry s request for a preliminary injunction. CONCLUSION With the increase of design patent filings and enforcement actions for the patented designs, a knowledge of the case law is critical to help practitioners counsel clients on how to maximize design patent protection as an integral component of a company s intellectual property portfolio. IPT ENDNOTES 1. In re Mann, 861 F.2d 1581 (Fed. cir. 1998). 2. Crocs Inc. v. ITC, 598 F.3d. 1294,1782 (Fed. cir. 2010). 3. Egyptian Goddess, Inc. v. Swisa, Inc. 542 F. 3d 665 (Fed. cir. 2008). 4. OraLabs, Inc. v. Kind Group LLC, 2014 Wl (d. col. 2014). 5. Blackberry Limited v. Typo Products LLC, 2014 Wl (n.d. cal. 2014). 6. Id. at * Id. at * Carlini Enterprises, Inc. v. Paul Yaffe Design, Inc., 2014 Wl (c.d. cal. 2014). 9. Lee v. Dayton-Hudson Corp., 838 F.2d 1186 (Fed. cir. 1988). 10. Seaway Trading Corp. v. Walgreens Corp., no (Fed. cir. 2009). 11. High Point Design LLC v. Buyer s Direct Inc., 2014 Wl (S.d. n.y. 2014). 12. MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326 (Fed. cir. 2014). 13. Id. at High Point Design LLC v. Buyer s Direct Inc., 2014 Wl (S.d. n.y. 2014). 15. Id. at *6 (emphasis added). 16. Times Three Clothier, LLC v. Spanx, Inc., 2014 Wl (S.d.n.y. 2014). 17. Id. at Id. (internal quotes omitted). 19. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. cir. 2014). 20. Legler v. Exxel Outdoors, Inc., 2014 Wl (e.d. Wis. 2014). 21. Crocs at Blackberry Limited v. Typo Products LLC, 2014 Wl (n.d. cal. 2014). 28 Intellectual ProPerty today FeBruary, 2015