Design Patent Claim Construction: Navigating Written Description, Ornamentality, Functionality and More Drafting Claims to Withstand Scrutiny and Avoiding Claim Limitation Attack 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific THURSDAY, NOVEMBER 17, 2016 Presenting a live 90-minute webinar with interactive Q&A Today’s faculty features: The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Christopher V. Carani, Shareholder, McAndrews Held & Malloy, Chicago Robert S. Katz, Esq., Banner & Witcoff, Washington, D.C. Nathan B. Sabri, Morrison & Foerster, San Francisco
Transcript
Design Patent Claim Construction: NavigatingWritten Description, Ornamentality,Functionality and MoreDrafting Claims to Withstand Scrutiny and Avoiding Claim Limitation Attack
The audio portion of the conference may be accessed via the telephone or by using your computer'sspeakers. Please refer to the instructions emailed to registrants for additional information. If youhave any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
Christopher V. Carani, Shareholder, McAndrews Held & Malloy, Chicago
Robert S. Katz, Esq., Banner & Witcoff, Washington, D.C.
Nathan B. Sabri, Morrison & Foerster, San Francisco
Tips for Optimal Quality
Sound QualityIf you are listening via your computer speakers, please note that the qualityof your sound will vary depending on the speed and quality of your internetconnection.
If the sound quality is not satisfactory, you may listen via the phone: dial1-866-819-0113 and enter your PIN when prompted. Otherwise, pleasesend us a chat or e-mail [email protected] immediately so we can addressthe problem.
If you dialed in and have any difficulties during the call, press *0 for assistance.
Viewing QualityTo maximize your screen, press the F11 key on your keyboard. To exit full screen,press the F11 key again.
FOR LIVE EVENT ONLY
Sound QualityIf you are listening via your computer speakers, please note that the qualityof your sound will vary depending on the speed and quality of your internetconnection.
If the sound quality is not satisfactory, you may listen via the phone: dial1-866-819-0113 and enter your PIN when prompted. Otherwise, pleasesend us a chat or e-mail [email protected] immediately so we can addressthe problem.
If you dialed in and have any difficulties during the call, press *0 for assistance.
Viewing QualityTo maximize your screen, press the F11 key on your keyboard. To exit full screen,press the F11 key again.
Continuing Education Credits
In order for us to process your continuing education credit, you must confirm yourparticipation in this webinar by completing and submitting the AttendanceAffirmation/Evaluation after the webinar.
A link to the Attendance Affirmation/Evaluation will be in the thank you emailthat you will receive immediately following the program.
For additional information about continuing education, call us at 1-800-926-7926ext. 35.
FOR LIVE EVENT ONLY
In order for us to process your continuing education credit, you must confirm yourparticipation in this webinar by completing and submitting the AttendanceAffirmation/Evaluation after the webinar.
A link to the Attendance Affirmation/Evaluation will be in the thank you emailthat you will receive immediately following the program.
For additional information about continuing education, call us at 1-800-926-7926ext. 35.
Program Outline
I. Design Patent claim construction
A. General considerations and history of design claim construction
B. Ornamentality vs. functionality
C. Other claim interpretation issues
II. Written description requirement
I. Design Patent claim construction
A. General considerations and history of design claim construction
1. General considerations and history of design claim construction.
2. Ornamentality vs. functionality.
3. Other claim interpretation issues.
Design patent claim construction1. General considerations and history of design claim construction.
2. Ornamentality vs. functionality.
3. Other claim interpretation issues.
Morrison & Foerster LLP 6
1. General considerations and history of design claimconstruction.
1. Brief design patent history2. What changed and why?3. Risks of verbalizing design claim vs. when it is appropriate.
2. Ornamentality vs. functionality.
3. Other claim interpretation issues.
Design patent claim construction1. General considerations and history of design claim
construction.1. Brief design patent history2. What changed and why?3. Risks of verbalizing design claim vs. when it is appropriate.
2. Ornamentality vs. functionality.
3. Other claim interpretation issues.
Morrison & Foerster LLP 7
• Whoever invents any new, original, and ornamental design for anarticle of manufacture may obtain a patent therefor, subject to theconditions and requirements of this title.
• The provisions of this title relating to patents for inventions shallapply to patents for designs, except as otherwise provided.
Statutory basis: 35 U.S.C. § 171
8
• Whoever invents any new, original, and ornamental design for anarticle of manufacture may obtain a patent therefor, subject to theconditions and requirements of this title.
• The provisions of this title relating to patents for inventions shallapply to patents for designs, except as otherwise provided.
Morrison & Foerster LLP
George Bruce’s Font: D’1
9Morrison & Foerster LLP
• “Determining whether a design patent claim has been infringedrequires, first, as with utility patents, that the claim be properlyconstrued to determine its meaning and scope.”
• “Determining whether a design patent claim has been infringedrequires, first, as with utility patents, that the claim be properlyconstrued to determine its meaning and scope.”
How were courts to construe designs into words,and with how much detail?
But what does that mean?
11
How were courts to construe designs into words,and with how much detail?
Morrison & Foerster LLP
• Design “better represented by the photographic illustration than itcould be by any description, and a description would probably not beintelligible without the illustration.”
• Dobson v. Dornan, 118 U.S. 10, 14 (1886).
• Note: Not a claim construction case, of course. Issue was whetherpatent was void on its face for lack of sufficient description. But textabove cited repeatedly by Federal Circuit in cases to be discussed.
Well before Markman was Dobson
12
• Design “better represented by the photographic illustration than itcould be by any description, and a description would probably not beintelligible without the illustration.”
• Dobson v. Dornan, 118 U.S. 10, 14 (1886).
• Note: Not a claim construction case, of course. Issue was whetherpatent was void on its face for lack of sufficient description. But textabove cited repeatedly by Federal Circuit in cases to be discussed.
Morrison & Foerster LLP
• Elmer court construed claim by discussing required elements, but didnot endeavor to reduce design to textual description.
• “[T]he only design shown and described is . . a sign that includes,inter alia, triangular vertical ribs and an upper protrusion. . . . [W]einterpret the claim as being limited to a design that includes amongits ornamental features triangular vertical ribs and an upperprotrusion.”
• Elmer court construed claim by discussing required elements, but didnot endeavor to reduce design to textual description.
• “[T]he only design shown and described is . . a sign that includes,inter alia, triangular vertical ribs and an upper protrusion. . . . [W]einterpret the claim as being limited to a design that includes amongits ornamental features triangular vertical ribs and an upperprotrusion.”
• “[A] ball shaped like a football, with a slender, straight tailshaftprojecting from the rear of the football. In addition, the [] design hasthree fins symmetrically arranged around the tailshaft, each of whichhas a gentle curve up and outward which creates a fin with a largersurface area at the end furthest from the ball. The fins flareoutwardly along the entire length of the tailshaft, with the front endof the fin extending slightly up along the side of the football so thatthe fins seemingly protrude from the inside of the football.”
• OddzOn Prods. v. Just Toys, 122 F.3d 1396, 1400 (Fed. Cir. 1997)
OddzOn district court construction
14
• “[A] ball shaped like a football, with a slender, straight tailshaftprojecting from the rear of the football. In addition, the [] design hasthree fins symmetrically arranged around the tailshaft, each of whichhas a gentle curve up and outward which creates a fin with a largersurface area at the end furthest from the ball. The fins flareoutwardly along the entire length of the tailshaft, with the front endof the fin extending slightly up along the side of the football so thatthe fins seemingly protrude from the inside of the football.”
• OddzOn Prods. v. Just Toys, 122 F.3d 1396, 1400 (Fed. Cir. 1997)
Morrison & Foerster LLP
• “A hollow tubular frame of generally square cross section, where the squarehas sides of length S, the frame has a length of approximately 3S, and theframe has a thickness of approximately T=0.1S; the corners of the crosssection are rounded, with the outer corner of the cross section rounded on a90 degree radius of approximately 1.25T, and the inner corner of the crosssection rounded on a 90 degree radius of approximately 0.25T; and withrectangular abrasive pads of thickness T affixed to three of the sides of theframe, covering the flat portion of the sides while leaving the curved radiusuncovered, with the fourth side of the frame bare.”
• “A hollow tubular frame of generally square cross section, where the squarehas sides of length S, the frame has a length of approximately 3S, and theframe has a thickness of approximately T=0.1S; the corners of the crosssection are rounded, with the outer corner of the cross section rounded on a90 degree radius of approximately 1.25T, and the inner corner of the crosssection rounded on a 90 degree radius of approximately 0.25T; and withrectangular abrasive pads of thickness T affixed to three of the sides of theframe, covering the flat portion of the sides while leaving the curved radiusuncovered, with the fourth side of the frame bare.”
• Federal Circuit asks for briefing on issue in Egyptian Goddess enbanc order: “Should claim construction apply to design patents, and,if so, what role should that construction play in the infringementanalysis? See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed.Cir. 1995).”
• November 26, 2007, Order (Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. CaseNo. 2006-1562).
• Flood of amicus briefs filed on topic.
Federal Circuit asks for briefing
16
• Federal Circuit asks for briefing on issue in Egyptian Goddess enbanc order: “Should claim construction apply to design patents, and,if so, what role should that construction play in the infringementanalysis? See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed.Cir. 1995).”
• November 26, 2007, Order (Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. CaseNo. 2006-1562).
• Flood of amicus briefs filed on topic.
Morrison & Foerster LLP
• Markman does not proscribe detailed verbal analysis of designpatent claims.
• “Given the recognized difficulties entailed in trying to describe adesign in words, the preferable course ordinarily will be for a districtcourt not to attempt to ‘construe’ a design patent claim by providing adetailed verbal description of the claimed design.”
• Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (enbanc)
Egyptian Goddess court on rehearing
17
• Markman does not proscribe detailed verbal analysis of designpatent claims.
• “Given the recognized difficulties entailed in trying to describe adesign in words, the preferable course ordinarily will be for a districtcourt not to attempt to ‘construe’ a design patent claim by providing adetailed verbal description of the claimed design.”
• Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (enbanc)
Morrison & Foerster LLP
• “[I]n deciding whether to attempt a verbal description of the claimeddesign, the court should recognize the risks entailed in such adescription, such as the risk of placing undue emphasis on particularfeatures of the design and the risk that a finder of fact will focus oneach individual described feature in the verbal description ratherthan on the design as a whole.”
• Egyptian Goddess, 543 F.3d at 679-80.
Egyptian Goddess: Risks of claim construction
18
• “[I]n deciding whether to attempt a verbal description of the claimeddesign, the court should recognize the risks entailed in such adescription, such as the risk of placing undue emphasis on particularfeatures of the design and the risk that a finder of fact will focus oneach individual described feature in the verbal description ratherthan on the design as a whole.”
• Egyptian Goddess, 543 F.3d at 679-80.
Morrison & Foerster LLP
• AlJ construction: “[F]ootwear having a foot opening with a strap that may or may notinclude any patterning, is attached to the body of the footwear by two round connectors, is ofuniform width between the two round connectors, has a wrench-head like shape at the pointof attachment, and extends to the heel of the shoe; with round holes on the roof of the upperplaced in a systematic pattern; with trapezoid-shaped holes evenly spaced around thesidewall of the upper including the front portion; with a relatively flat sole (except forupward curvature in the toe and heel) that may or may not contain tread on the upper andlower portions of the sole, but if tread exists, does not cover the entire sole, and scallopedindentations that extend from the side of the sole in the middle portion that curve towardeach other.”
• Crocs, Inc. v. ITC, 598 F.3d 1294, 1301 (Fed. Cir. 2010) (quoting Initial Determinationon Violation of Section 1337)
Crocs court reiterates risks
19
• AlJ construction: “[F]ootwear having a foot opening with a strap that may or may notinclude any patterning, is attached to the body of the footwear by two round connectors, is ofuniform width between the two round connectors, has a wrench-head like shape at the pointof attachment, and extends to the heel of the shoe; with round holes on the roof of the upperplaced in a systematic pattern; with trapezoid-shaped holes evenly spaced around thesidewall of the upper including the front portion; with a relatively flat sole (except forupward curvature in the toe and heel) that may or may not contain tread on the upper andlower portions of the sole, but if tread exists, does not cover the entire sole, and scallopedindentations that extend from the side of the sole in the middle portion that curve towardeach other.”
• Crocs, Inc. v. ITC, 598 F.3d 1294, 1301 (Fed. Cir. 2010) (quoting Initial Determinationon Violation of Section 1337)
Morrison & Foerster LLP
• Federal Circuit rejects construction.
• “This case shows the dangers of reliance on a detailed verbal claimconstruction. The claim construction focused on particular features .. . and led the administrative judge and the Commission away fromconsideration of the design as a whole.”
• “Without a view to the design as a whole, the Commission used minordifferences between the patented design and the accused products toprevent a finding of infringement.”
• Crocs, 598 F.3d at 1303
Crocs court reiterates risks
20
• Federal Circuit rejects construction.
• “This case shows the dangers of reliance on a detailed verbal claimconstruction. The claim construction focused on particular features .. . and led the administrative judge and the Commission away fromconsideration of the design as a whole.”
• “Without a view to the design as a whole, the Commission used minordifferences between the patented design and the accused products toprevent a finding of infringement.”
• Crocs, 598 F.3d at 1303
Morrison & Foerster LLP
Crocs side by side comparison
21Morrison & Foerster LLP
• “Words cannot easily describe ornamental designs. A design patent’sclaim is thus often better represented by illustrations than a writtenclaim construction.”
• Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1321 (Fed. Cir. 2016)
• BUT
• “Even so, a district court may use claim construction to help guidethe fact finder through issues that bear on claim scope. We haveoften blessed claim constructions, for example, where the courthelped the fact finder distinguish between those features of theclaimed design that are ornamental and those that are purelyfunctional.”
• Id. (internal quotation omitted).
Sport Dimension court does too
22
• “Words cannot easily describe ornamental designs. A design patent’sclaim is thus often better represented by illustrations than a writtenclaim construction.”
• Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1321 (Fed. Cir. 2016)
• BUT
• “Even so, a district court may use claim construction to help guidethe fact finder through issues that bear on claim scope. We haveoften blessed claim constructions, for example, where the courthelped the fact finder distinguish between those features of theclaimed design that are ornamental and those that are purelyfunctional.”
• Id. (internal quotation omitted).
Morrison & Foerster LLP
• As we will talk about momentarily, issues of functionality maysupport attempts to construe claims, per acknowledgment in SportDimension. But beyond functionality:
• Questions about how to read design patent claim may also supportattempts to construe claims – presence of dotted lines to showmaterial that is not claimed, oblique shade lines to representtransparent or shiny surfaces, etc.
• General efforts to translate design into words independent of abovegoals less likely to be successful, especially with extensive detail.
• Even if you persuade trial court or ALJ to construe as requested, thatvictory could be in jeopardy.
Some initial litigation takeaways
23
• As we will talk about momentarily, issues of functionality maysupport attempts to construe claims, per acknowledgment in SportDimension. But beyond functionality:
• Questions about how to read design patent claim may also supportattempts to construe claims – presence of dotted lines to showmaterial that is not claimed, oblique shade lines to representtransparent or shiny surfaces, etc.
• General efforts to translate design into words independent of abovegoals less likely to be successful, especially with extensive detail.
• Even if you persuade trial court or ALJ to construe as requested, thatvictory could be in jeopardy.
“Whoever invents any new, original and ornamentaldesign for an article of manufacture may obtain apatent therefor, subject to the conditions andrequirements of this title.”
35 U.S.C.§ 171, Design Patents
34
“Whoever invents or discovers any new and usefulprocess, machine, manufacture, or composition ofmatter, or any new and useful improvement thereof,may obtain a patent therefor, subject to the conditionsand requirements of this title.”
35 U.S.C.§ 101, Utility Patents
What Qualifies as “Ornamental?”What Qualifies as “Ornamental?”35 U.S.C.35 U.S.C.§§171171
Bonito Boats (1989)
“To qualify for protection, a design must present an…appearance that is not dictated by functionalone, and must satisfy the other criteria ofpatentability.”
See 35 U.S.C.§171.
35
Bonito Boats (1989)
“To qualify for protection, a design must present an…appearance that is not dictated by functionalone, and must satisfy the other criteria ofpatentability.”
See 35 U.S.C.§171.
Operative question: Are there alternative designs?
“Dictated“Dictated SolelySolely by Function”by Function”Alternative Designs TestAlternative Designs Test
Fed. Cir.:“We have often focused … on the availability ofalternative designs as an important—if notdispositive—factor in evaluating the legalfunctionality of a claimed design.”
36
Ethicon v.Ethicon v. CovidienCovidien(Fed. Cir. 2015)(Fed. Cir. 2015)
“To be considered an alternative, the alternativedesign must simply provide the same or similarfunctional capabilities.”
* * *
Example 1
Issue 1:Statutory Compliance
37
Example 1 Example 2
Issue 1:Statutory Compliance
38
Example 1 Example 2 Example 3
Issue 1:Statutory Compliance
39
Issue 2: Claim ConstructionIssue 2: Claim Construction
Are Any Aspects of the Appearance ofthe Overall Design Disregarded?
40
Issue 2: Claim ConstructionIssue 2: Claim Construction
Are Any Aspects of the Appearance ofthe Overall Design Disregarded?
40
Two SeparateTwo Separate ““FunctionalityFunctionality”” IssuesIssues
Issue 1: Statutory ComplianceIs the Design Eligible for Design Protection?
Issue 2: Claim ConstructionAre Any Aspects of Appearance To BeDisregarded?
41
Issue 1: Statutory ComplianceIs the Design Eligible for Design Protection?
Issue 2: Claim ConstructionAre Any Aspects of Appearance To BeDisregarded?
41
Part of scopeof protection?
Elmer v. ICC Fabricating, IncElmer v. ICC Fabricating, Inc.,.,67 F. 3d 1571 (Fed. Cir. 1995)(J.Lourie)
Design Right Accused Product
vs.
4242
Holding: “Support ribs” and “protrusion” arefunctional, but part of the Claimed Design.Their inclusion in solid lines in claimed designlimits scope of protection.
But see, OddzonOddzon Prods., IncProds., Inc., v. Just Toys, Inc.., v. Just Toys, Inc.122 F. 3d 1396 (Fed. Cir. 1997) (J. Lourie)
tail and finstail and fins
Holding: Tail and fins are“dictated solely by function” andare thus not part of claimeddesign.
43
OddzOnOddzOn Prods. v. Just ToysProds. v. Just Toys,,122 F.3d 1396, 1405 (Fed. Cir. 1997) (J. Lourie)
“A design patent only protects the:
(1) novel, and
(2) ornamental
features of the patented design.”
WRONG!
44
“A design patent only protects the:
(1) novel, and
(2) ornamental
features of the patented design.”
Claim Construction (Matter of Law)“Richardson's multi-function tool comprises several elements thatare driven purely by utility. As the district court noted, elementssuch as the handle, the hammer-head, the jaw, and the crowbarare dictated by their functional purpose.”
Richardson v. Stanley Works, Inc.,Richardson v. Stanley Works, Inc.,597 F.3d 1288 (Fed. Cir. 2010)(597 F.3d 1288 (Fed. Cir. 2010)(J.LourieJ.Lourie))
2 hammer-head
41
3 jaw
handlecrow-bar
45
Claim Construction
“Discount,” “Ignore,” “Factor out,” these features
“Divide and Conquer”?“Divide and Conquer”?
46
1
4
hammer-head
crow-bar
“Divide and Conquer”?“Divide and Conquer”?
47
3
2 jaw
handle
1
4
hammer-head
crow-bar
“Divide and Conquer”?“Divide and Conquer”?
48
3
2 jaw
handle
Claim Construction = Claim DestructionClaim Construction = Claim Destruction
49
Apple, Inc. v. SamsungApple, Inc. v. Samsung ElecsElecs. Co.,. Co.,786 F.3d 983 (Fed. Cir., May 18, 2015)(J.Prost)
roundedcorners
rectangularshape
5050
Apple Design Patent
Apple, Inc. v. SamsungApple, Inc. v. Samsung ElecsElecs. Co.,. Co.,786 F.3d 983 (Fed. Cir., May 18, 2015)(J.Prost)
roundedcorners
rectangularshape
5151
Fed. Cir.: “Richardson did not establish a rule to eliminate entirestructural elements from the claim scope as Samsung argues.”
Apple Design Patent
Apple, Inc. v. SamsungApple, Inc. v. Samsung ElecsElecs. Co.,. Co.,786 F.3d 983 (Fed. Cir., May 18, 2015)(J.Prost)
5252
Apple Court: “The claim construction included the ornamental aspectsof the components:
‘(i) the standard shape of the hammer-head,(ii) the diamond-shaped flare of the crow bar and the top of the jaw,(iii) the rounded neck,(iv) the orientation of the crow bar relative to the head of the tool, and(v) the plain, undecorated handle.’”
Ethicon v.Ethicon v. CovidienCovidien,,796 F.3d 1312 (Fed. Cir., Aug. 7, 2015)(J.Chen)
torque knob
activationbutton
5353
trigger
Ethicon v.Ethicon v. CovidienCovidien,,796 F.3d 1312 (Fed. Cir., Aug. 7, 2015)(J.Chen)
torque knob
activationbutton
5454
Fed.Cir.: “We agree that the trigger, torque knob, and activation button elementsof the underlying article have functional aspects. But the district court'sconstruction of the Design Patents to have no scope whatsoever fails toaccount for the particular ornamentation of the claimed design and departsfrom our established legal framework for interpreting design patent claims.”
trigger
Sport Dimension v. Coleman Co.,Sport Dimension v. Coleman Co.,820 F.3d 1316 (Fed. Cir. April 19, 2016)(820 F.3d 1316 (Fed. Cir. April 19, 2016)(J.StollJ.Stoll))
armband
55
sidetorsotapering
Sport Dimension v. Coleman Co.,Sport Dimension v. Coleman Co.,820 F.3d 1316 (Fed. Cir. April 19, 2016)(820 F.3d 1316 (Fed. Cir. April 19, 2016)(J.StollJ.Stoll))
armband
56
“The district court eliminated the armbands and sidetorso tapering from the claim entirely, so itsconstruction runs contrary to our law.”
sidetorsotapering
Scope of ProtectionScope of ProtectionOverall Appearance as Depicted inOverall Appearance as Depicted in DrawingsDrawings
++ ==
57
Applicant’s Design Choices and Selection:Applicant’s Design Choices and Selection:
•• Specific Key HandleSpecific Key Handle•• Specific Key BladeSpecific Key Blade
Scope of ProtectionScope of ProtectionOverall Appearance as Depicted inOverall Appearance as Depicted in DrawingsDrawings
++ ==
58
Applicant’s Design Choices and Selection:Applicant’s Design Choices and Selection:
•• Specific Key HandleSpecific Key Handle•• Specific Key BladeSpecific Key Blade•• Aspect RatioAspect Ratio•• OrientationOrientation•• PositioningPositioning
MORE
Is Key Blade Considered forIs Key Blade Considered for InfringementInfringement??Aspect RatioAspect Ratio Between Constituent ElementsBetween Constituent Elements
Design Right Accused Product
59
Is Key Blade Considered forIs Key Blade Considered for InfringementInfringement??Aspect RatioAspect Ratio Between Constituent ElementsBetween Constituent Elements
Design Right Accused Product
60
…LIKELY INFRINGEMENT
Design Right Accused Product
Is Key Blade Considered forIs Key Blade Considered for InfringementInfringement??Distinct Visual Difference Can Reside in “Functional” PortionDistinct Visual Difference Can Reside in “Functional” Portion
61
Design Right Accused Product
Is Key Blade Considered forIs Key Blade Considered for InfringementInfringement??Distinct Visual Difference Can Reside in “Functional” PortionDistinct Visual Difference Can Reside in “Functional” Portion
62
…LIKELY INFRINGEMENT
Design RightPrior Art
Is Key Blade Considered forIs Key Blade Considered for ValidityValidity??Distinct Visual Differences in “Functional Portion”Distinct Visual Differences in “Functional Portion”
63
Is Key Blade Considered forIs Key Blade Considered for ValidityValidity??
Design RightPrior Art
64
…LIKELY ANTICIPATED
Clear Statement of LawClear Statement of LawClear Jury InstructionClear Jury Instruction
“A design patent only protects the:
(1) novel, and
(2) ornamental
features of the patented design.”
65
overall appearance of the design asdepicted in the drawings; it does notprotect functional qualities or generaldesign concepts.”
“A design patent only protects the:
(1) novel, and
(2) ornamental
features of the patented design.”
Thank You!Thank You!
Christopher V. Carani, Esq. is a partner and shareholder at the intellectual property law firm of McAndrews, Held & Malloy, Ltd.based in Chicago, Illinois. He is a leading voice in the field of design law. Chris counsels clients on a wide range of strategic designprotection and enforcement issues, both in the U.S. and abroad. He is often called upon to render infringement, validity and design-around opinions and serve as a legal consultant/expert in design law cases.
Chris is the current chair of AIPPI Committee on Designs. He is immediate past chair of the American Bar Association’s DesignRights Committee, and is the past chair of the American Intellectual Property Law Association (AIPLA) Committee on IndustrialDesigns. In the landmark design patent case Egyptian Goddess v. Swisa, he authored amicus briefs on behalf of the AIPLA at both thepetition and en banc stages. In 2009 and 2011-12, he was an invited speaker at the United States Patent & Trademark Office’s(“USPTO”) Design Day.
Prior to joining McAndrews, Chris served as a law clerk to the Honorable Rebecca R. Pallmeyer at the U.S. District Court for theNorthern District of Illinois. Chris was conferred his Juris Doctorate from The Law School at The University of Chicago. He also holds aBachelor of Science in Engineering from Marquette University. He is licensed to practice before the U.S. Supreme Court, the U.S.Federal Circuit Court of Appeals and other U.S. District Courts. He is a registered patent attorney licensed to practice before the USPTO.
He is on the faculty of Northwestern University School of Law as an Adjunct Professor teaching IP Law.He has published and lectured extensively on design law and is a frequent contributor to CNN on intellectual property law
issues. He is also often called upon to provide comment to other media outlets, including New York Times, Wall Street Journal, NPR,PBS TV, CNBC TV, BBC, Bloomberg TV, Reuters, InformationWeek, Fast Company, ComputerWorld, PCWorld, Washington Post, L.A.Times, Chicago Tribune, Forbes, Fortune, and FoxBusiness TV. Away from the law, Chris is a studied jazz musician playing upright basson the Chicago jazz circuit.
Christopher V. Carani, Esq.ShareholderMcANDREWS HELD & MALLOY LTD.500 West Madison St., Suite 3400Chicago Illinois 60661(Tel) 312 775 8000(Fax) 312 775 [email protected]
66
Christopher V. Carani, Esq. is a partner and shareholder at the intellectual property law firm of McAndrews, Held & Malloy, Ltd.based in Chicago, Illinois. He is a leading voice in the field of design law. Chris counsels clients on a wide range of strategic designprotection and enforcement issues, both in the U.S. and abroad. He is often called upon to render infringement, validity and design-around opinions and serve as a legal consultant/expert in design law cases.
Chris is the current chair of AIPPI Committee on Designs. He is immediate past chair of the American Bar Association’s DesignRights Committee, and is the past chair of the American Intellectual Property Law Association (AIPLA) Committee on IndustrialDesigns. In the landmark design patent case Egyptian Goddess v. Swisa, he authored amicus briefs on behalf of the AIPLA at both thepetition and en banc stages. In 2009 and 2011-12, he was an invited speaker at the United States Patent & Trademark Office’s(“USPTO”) Design Day.
Prior to joining McAndrews, Chris served as a law clerk to the Honorable Rebecca R. Pallmeyer at the U.S. District Court for theNorthern District of Illinois. Chris was conferred his Juris Doctorate from The Law School at The University of Chicago. He also holds aBachelor of Science in Engineering from Marquette University. He is licensed to practice before the U.S. Supreme Court, the U.S.Federal Circuit Court of Appeals and other U.S. District Courts. He is a registered patent attorney licensed to practice before the USPTO.
He is on the faculty of Northwestern University School of Law as an Adjunct Professor teaching IP Law.He has published and lectured extensively on design law and is a frequent contributor to CNN on intellectual property law
issues. He is also often called upon to provide comment to other media outlets, including New York Times, Wall Street Journal, NPR,PBS TV, CNBC TV, BBC, Bloomberg TV, Reuters, InformationWeek, Fast Company, ComputerWorld, PCWorld, Washington Post, L.A.Times, Chicago Tribune, Forbes, Fortune, and FoxBusiness TV. Away from the law, Chris is a studied jazz musician playing upright basson the Chicago jazz circuit.
66
6767
Design Patent Functionality: A Sensible Solution,Christopher V. Carani, ABA’s Landslide®,
Nov/Dec 2014, Vol. 7, No. 2.
Claim Construction (drawings) andWritten Description Requirement
• Egyptian Goddess: trial court can usefully guidethe finder of fact by addressing a number of(other) issues that bear on the scope of the claim• particular conventions in design patent drafting,
such as the role of broken lines;• assessing and describing the effect of any
representations that may have been made in thecourse of the prosecution history; and
• distinguishing between those features of theclaimed design that are ornamental and those thatare purely functional
BANNER & WITCOFF | November 201669
• Egyptian Goddess: trial court can usefully guidethe finder of fact by addressing a number of(other) issues that bear on the scope of the claim• particular conventions in design patent drafting,
such as the role of broken lines;• assessing and describing the effect of any
representations that may have been made in thecourse of the prosecution history; and
• distinguishing between those features of theclaimed design that are ornamental and those thatare purely functional
Claim Interpretation – Drawings
• Drafting symbols -- established and creativeconventions and symbols• Broken lines• Surface shading (line or stippling)• Transparency/translucency/reflective• Shading for color• Illumination• Others
• Many times recited in specification but sometimes justestablished convention
BANNER & WITCOFF | November 201670
• Drafting symbols -- established and creativeconventions and symbols• Broken lines• Surface shading (line or stippling)• Transparency/translucency/reflective• Shading for color• Illumination• Others
• Many times recited in specification but sometimes justestablished convention
Claim Interpretation – Broken lines
• Broken lines are wellestablished to meanportions that are disclaimed
• Such is typically recited inthe special statementsection
BANNER & WITCOFF | November 201671
• Broken lines are wellestablished to meanportions that are disclaimed
• Such is typically recited inthe special statementsection
Claim Interpretation – Shading
• Surface shading used on the majority of designpatents in the U.S.
• Lines/dots applied to drawing to help show thesurface shape
BANNER & WITCOFF | November 201672
• Surface shading used on the majority of designpatents in the U.S.
• Lines/dots applied to drawing to help show thesurface shape
• Different ways toshow this – usuallyrecited in thespecial statementsection
BANNER & WITCOFF | November 201674
• Claim can includeportions that areilluminated
• Different ways toshow this – usuallyrecited in thespecial statementsection
Written Description – What’s The Issue
Section 120 and 112 have requirements tied into thefollowing two circumstances:
1. Can you amend the scope of a claim in a pendingdesign application? and
2. If you file a continuation design patent applicationwith a claim scope that differs from what wasclaimed in the parent, are you entitled to priority?
BANNER & WITCOFF | November 201675
Section 120 and 112 have requirements tied into thefollowing two circumstances:
1. Can you amend the scope of a claim in a pendingdesign application? and
2. If you file a continuation design patent applicationwith a claim scope that differs from what wasclaimed in the parent, are you entitled to priority?
Why an Applicant may want to do this?Some examples:
1. To strengthen design protection on existingprotection
2. To provide meaningful protection on later-createdproducts sharing common DNA
3. Procure rights to stop a 3rd party knockoff
BANNER & WITCOFF | November 201676
Some examples:
1. To strengthen design protection on existingprotection
2. To provide meaningful protection on later-createdproducts sharing common DNA
3. Procure rights to stop a 3rd party knockoff
In Order to Do This….• Pending application AND• No new matter/Comply with the written description
requirement
• What do we have?• Racing Strollers (en banc)• Salmon• Daniels• Owens• USPTO carve out
BANNER & WITCOFF | November 201677
• Pending application AND• No new matter/Comply with the written description
requirement
• What do we have?• Racing Strollers (en banc)• Salmon• Daniels• Owens• USPTO carve out
Racing Strollers• Applicant filed a continuation design patent application and
needed priority to a utility patent application to avoid an on-sale bar
• Disclaimed wheels (added disclaimed spokes)• Note some other changes (see e.g., seam in seat)
BANNER & WITCOFF | November 201678
• Applicant filed a continuation design patent application andneeded priority to a utility patent application to avoid an on-sale bar
• Disclaimed wheels (added disclaimed spokes)• Note some other changes (see e.g., seam in seat)
78
Racing Strollers
• Rejected; Board affirmed; CAFC reversed (En Banc)• As a practical matter, meeting the … requirements of
Section 112 is, in the case of an ornamental design, simplya question of whether the earlier application containsillustrations, whatever form they may take, depicting theornamental design illustrated in the later application.
• The test should generally focus on whether the later fileddesign has been disclosed.
• The test for sufficiency in disclosure is whether thedisclosure reasonably conveys to those skilled in the artthat the inventor had possession of the claimed subjectmatter at the time of filing
BANNER & WITCOFF | November 201679
• Rejected; Board affirmed; CAFC reversed (En Banc)• As a practical matter, meeting the … requirements of
Section 112 is, in the case of an ornamental design, simplya question of whether the earlier application containsillustrations, whatever form they may take, depicting theornamental design illustrated in the later application.
• The test should generally focus on whether the later fileddesign has been disclosed.
• The test for sufficiency in disclosure is whether thedisclosure reasonably conveys to those skilled in the artthat the inventor had possession of the claimed subjectmatter at the time of filing
In re SalmonChangedshape of
seatentirely
fromsquare
tocircular
BANNER & WITCOFF | November 201680
In re Daniels• Applicant filed leecher design with leaf ornamentation.
Filed a continuation to protect without ornamentation(priority needed)
• Holes were added (not specifically disclosed) and surfaceornamentation removed
BANNER & WITCOFF | November 201681
In re Daniels
• Rejected; Board affirmed; CAFC reversed• The test for sufficiency in disclosure is whether the
disclosure reasonably conveys to those skilled in the art thatthe inventor had possession of the claimed subject matter atthe time of filing
• Impliedly, the written description requirement can still be meteven if the design later claimed is not exactly present in theoriginal filed drawings but one of ordinary skill wouldrecognize that the inventor had possession of it.
BANNER & WITCOFF | November 201682
• Rejected; Board affirmed; CAFC reversed• The test for sufficiency in disclosure is whether the
disclosure reasonably conveys to those skilled in the art thatthe inventor had possession of the claimed subject matter atthe time of filing
• Impliedly, the written description requirement can still be meteven if the design later claimed is not exactly present in theoriginal filed drawings but one of ordinary skill wouldrecognize that the inventor had possession of it.
In re Owens
• Applicant neededpriority to avoid an on-sale bar
• Priority NOT granted• (disclaimed) boundary
line did not havesupport in original
BANNER & WITCOFF | November 201683
• Applicant neededpriority to avoid an on-sale bar
• Priority NOT granted• (disclaimed) boundary
line did not havesupport in original
USPTO The Carve Out – Part 1 (overview)
• USPTO is “carving out” situations where a designapplicant cannot protect his (supported) design:– USPTO wants on random combination of elements that
seemingly create a “new” design– relying on utility patent “written description” law for precedent
• CAFC has never found that the written descriptionrequirement was not met where the later filed design wasdisclosed in the originally filed application
• Still awaiting USPTO guidelines– Applying some standard– More stringent with GUIs
BANNER & WITCOFF | November 201684
• USPTO is “carving out” situations where a designapplicant cannot protect his (supported) design:– USPTO wants on random combination of elements that
seemingly create a “new” design– relying on utility patent “written description” law for precedent
• CAFC has never found that the written descriptionrequirement was not met where the later filed design wasdisclosed in the originally filed application
• Still awaiting USPTO guidelines– Applying some standard– More stringent with GUIs
The Carve Out – Part 2 (prediction)
• Prediction regarding the “carve out”:– later claims to discrete portions will most likely be OK in
almost all circumstances– later claims to portions that are visually associated with
one another will most likely be OK– later claims to portions that are functionally associated
with one another will most likely be OK– HOWEVER: situations where the later-filed claim seems
to be made up of a hodgepodge of unrelated elementsto form a new design, will likely be rejected
BANNER & WITCOFF | November 201685
• Prediction regarding the “carve out”:– later claims to discrete portions will most likely be OK in
almost all circumstances– later claims to portions that are visually associated with
one another will most likely be OK– later claims to portions that are functionally associated
with one another will most likely be OK– HOWEVER: situations where the later-filed claim seems
to be made up of a hodgepodge of unrelated elementsto form a new design, will likely be rejected
The Carve Out – Part 4 (process)
• If a rejection, the examiner must set forth detailed findingsto establish a prima facie case
• Applicant can present arguments and/or evidence inrebuttal
• The Examiner would reassess as with any other rejection
BANNER & WITCOFF | November 201686
• If a rejection, the examiner must set forth detailed findingsto establish a prima facie case
• Applicant can present arguments and/or evidence inrebuttal
• The Examiner would reassess as with any other rejection
www.bannerwitcoff.com
CHICAGO, ILTen South Wacker DriveSuite 3000Chicago, IL 6060T 312.463.5000F 312.463.5001
WASHINGTON, DC1100 13th Street NWSuite 1200Washington, DC 20005T 202.824.3000F 202.824.3001
BOSTON, MA28 State StreetSuite 1800Boston, MA 02109T 617.720.9600F 617.720.9601
PORTLAND, OROne World Trade Center121 Southwest Salmon Street11th FloorPortland, OR 97204T 503.425.6800F 503.425.6801
