Design Patent Guidance Found in Recent Court Decisions
Consumer products companies should be aware of three recent design patent decisions that may limit the breadth of design patents. As a result of these three decisions, consumer products companies may be able to have increased confidence that their products do not infringe patents claiming similar designs. Likewise, consumer products companies seeking to protect their own designs should be careful to avoid making the same mistakes as the patentees in the cases below.
1. Design Patent May Only Encompass Designs on Stated Article of Manufacture
In Curver Luxembourg, SARL v. Home Expressions Inc., the Federal Circuit considered an issue of first impression—whether verbal claim language identifying an article of manufacture in a design patent can limit the scope of a design patent, even if that article is not actually illustrated in the figures. Generally, design patents protect the ornamental appearance of an article while utility patents protect the way an article works. Design patents define the scope of the invention using figures, and utility patents define the scope of the invention using verbal claims.
In its decision, the Federal Circuit affirmed the district court’s dismissal for failure to state a plausible claim of infringement of a design patent titled “Pattern for a Chair,” holding that the accused baskets could not infringe a patent to a chair design. Although the text of the design patent referenced a chair, the figures only depicted a fabric pattern, as shown below.
In addition to relying on Supreme Court precedent and Patent Office regulations, the Federal Circuit relied on the patentee’s actions during prosecution to support its holding. The Federal Circuit found that the patentee could not claim a broader design because it amended the title, claim, and figure descriptions to recite “pattern for a chair” after the patent examiner found that the original title of “FURNITURE (PART OF-)” was “too vague.” By amending the claim to secure allowance, it could not recapture the lost claim scope.
This decision provides grounds for consumer products companies to avoid infringing broad design patents to unspecified articles, especially where “all of the drawings fail to depict an article of manufacture.” In light of Curver, patent applicants need to be thoughtful about the verbal descriptions included in design patent applications. Applicants seeking broad protection should consider ways to broadly identify the articles of manufacture and avoid limiting the article to too narrow of a particular use. Relatedly, design patent applicants need to carefully consider amendments to the verbal descriptions in the application. In the past, many applicants viewed these amendments as minor informalities to secure allowance. After Curver, applicants need to carefully consider the scope the amendment will sacrifice.
2. Design May Not Be Patentable If Intended Use Was Obvious
In Campbell Soup Co. v. Gamon Plus, Inc., the Federal Circuit altered the design patent obviousness analysis by allowing a prior art design to render a design obvious (and thus unpatentable) based on the intended use of the prior art design, not just the ornamental design itself. Design patent obviousness involves a two-step process to determine whether the design would have been obvious and thus unpatentable. First, the challenger must identify a primary reference—a single design that creates “basically the same visual impression” as the claimed design. Second, once the primary reference has been determined, other secondary references may be used to modify the primary reference to create a design that has the same overall visual appearance as the claimed design. The Federal Circuit’s decision in Campbell Soup addresses the primary reference requirement.
In its decision, the Federal Circuit vacated and remanded the Patent Office’s finding of nonobvious. The two design patents at issue related to gravity-fed can dispensers (e.g., canned soup displays for grocery stores). The claimed designs (the solid line portions) are depicted in blue below.
In the underlying inter partes review proceedings, the Patent Office found that the claimed designs were not obvious because the challenger failed to identify a primary reference. The challenger identified the Linz reference (below) as a primary reference. The Patent Office found that Linz did not create substantially the same visual impression as the claimed designs because it lacked a cylindrical object (e.g., soup can). On appeal, the Federal Circuit disagreed because Linz “is made to hold cylindrical objects in its display area.” The Federal Circuit further noted that the parties did not dispute that the Linz design was for dispensing cans and that a can would be used in the system.
When performing clearance or patentability analyses, consumer products companies should consider that the intended use of a design can contribute to the visual impression it conveys. A patentee or applicant may no longer immunize a design from unpatentability by tying it to a separate article to be used with the design. In this case, Gamon invented the shape of the dispenser but not the shape of the can and could not use the shape of the can to patent an otherwise unpatentable design.
Those defending against infringement of multicomponent designs may be able to argue that the intended use of a prior art design with a known component can satisfy the primary reference requirement. In the discovery phase of litigation, the accused infringers should try to gain admissions from the patentee and its experts regarding the use of prior art designs.
3. Adding Trademark to Product May Avoid Design Patent Infringement
In Columbia Sports Wear North America, Inc. v. Seirus Innovative Accessories, Inc., the Federal Circuit reversed the district court’s summary judgment of infringement of a design patent for heat reflective material. The claimed design is depicted below next to the accused design.
The Federal Circuit held that the district court erred in granting summary judgment, finding numerous triable issues of fact. Most significantly, the Federal Circuit found that the court erred because it declined to consider the effect of Seirus’s logo in the infringement analysis. Citing the Federal Circuit’s L.A. Gear decision, the district court found that “a defendant cannot avoid infringement by merely affixing its logo to an otherwise infringing design.” The Federal Circuit, however, distinguished L.A. Gear by explaining that the parties in L.A. Gear did not dispute that the designs were substantially similar and that L.A. Gear did not prohibit a fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one. Accordingly, the district court erred in finding that the logo could not distinguish the accused design as a matter of law.
There is uncertainty surrounding the final outcome and impact of this decision because Columbia has petitioned for rehearing by the full Federal Circuit. Nonetheless, and although the Federal Circuit did not address the specific significance of the addition of a logo in the infringement analysis, a significant takeaway from this opinion is that, under certain factual scenarios, a logo may be considered a potential difference between a patented design and an accused product. For those companies that might want to attempt to design-around an existing patented design, if the addition of a logo modifies a portion of the accused product that is relevant to (i.e., included within and not superfluous to) the scope of the patented design, such a modification may now be a relevant consideration in those attempts. Conversely, companies looking to protect their product designs should consider a robust filing strategy that includes protecting not only the overall product design, but also portions of the product design, keeping in mind the portions of their product design that would-be competitors might be most likely to attempt to modify through the inclusion of an ornamental logo.
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