Developing trends in design patent enforcement

Design patents can be a powerful tool for protecting a company’s intellectual property – as illustrated by recent trends in enforcement – but a cohesive strategy is essential for such protection to work effectively

While the recent Apple v Samsung litigation over design patents relating to Apple’s iPhone has garnered international attention, the past few years have also seen a quieter but steady rise in the number of US design patent applications filed and granted, as well as emerging trends in the particular sectors in which they are being asserted and types of company asserting them. These trends reflect a broader movement towards using design patents as a tool in the IP arsenal, often in conjunction with the different protections afforded by utility patents, trademarks, trade dress and copyrights. However, while protecting an important product with complementary intellectual property can be a wise business decision, it is vital to develop a cohesive strategy that takes advantage of important protections while minimising the risks of invalidation.

Scope of protection

Like utility patents, design patents are a form of statutory monopoly under Title 35 of the United States Code. They are prosecuted before the US Patent and Trademark Office in much the same way as utility patents and confer a similar right to exclude others from practising the claimed invention. However, there are also important differences between design and utility patents.

Design patents protect inventions of a “new, original, and ornamental design for an article of manufacture” and apply only to the way that an article looks – as opposed to better-known utility patents, which protect how it functions. In order to qualify for protection, a design must not be dictated entirely by function and must be sufficiently original when compared to previous designs. Significantly, the fact that a product is functional does not preclude protection of particular design aspects. Indeed, design patents are often used to protect ornamental aspects of primarily utilitarian products, such as shoes, auto parts and razor blade cartridges. A design patent is judged in light of the prior art and will be rejected if, when viewing the design as an integrated whole, it is substantially similar to a previous design. Prosecuting a design patent is generally a faster process than prosecuting a utility patent, taking on average about a year and a half from application to registration for design patents versus between two and three years for a utility patent. The trade-off is that design patents last 14 years, as compared to the 20-year term of a utility patent.

Lastly, where a utility patent’s scope is described by the words of the patent’s claims, the scope and coverage of a design patent are set forth in a series of drawings depicting the invention from various angles.

Infringement standard and available remedies

The modern test for design patent infringement is set out in Egyptian Goddess, Inc v Swisa, Inc (543 F 3d 665 (Fed Cir 2008)). It turns on whether an “ordinary observer” would consider the overall design of the accused product to be substantially the same as the product depicted in the design patent, such that he would believe that the accused product embodies the design patent or comes from the patentee.

Figure 1: Design patent application trends 2011-2014

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A design patent plaintiff is entitled to the same basic remedies that are available for infringement of utility patents: injunctions, damages of no less than a reasonable royalty and sometimes punitive damages and attorneys’ fees. However, an additional, significantly broader remedy is unique to design patents. As an alternative to recovery of lost profits or a reasonable royalty, a design patent claimant may elect to recover the infringer’s total profits attributable to the infringing product. The statutory language does not require profits to be apportioned to the particular patented design features, but instead refers to the “total profits” of an article of manufacture. In 2013 Apple was awarded nearly $300 million for Samsung’s infringement of several smartphone patents, including two design patents. Notably, the design patent damages encompassed Samsung’s entire profits for several of its smartphone models, despite the fact that the patents at issue covered only certain iPhone design aspects such as a “shiny black screen.” Although Samsung is appealing the award on the ground that design patent holders should not be permitted to recover profits made from sales of an entire product when only certain features are protected, Apple’s victory has demonstrated that a finding of design patent infringement can be costly – particularly where the allegedly infringing product is a significant revenue source – and that design patent enforcement can serve as an effective part of a company’s overall IP strategy.

Rise in US design patent applications

Recent trends in design patent prosecution demonstrate that companies are integrating design patents into their IP portfolios now more than ever. The number of design patent applications filed and granted has risen steadily every year since 2011. According to data from the US Patent and Trademark Office (USPTO), from September 2013 to September 2014 over 36,000 applications were filed and over 24,000 design patents were issued, compared to about 30,000 applications filed and about 21,000 issued in 2011.

During that timeframe, the companies most active in filing design patent applications were major players in the technology, automotive and apparel industries. According to the Intellectual Property Owners Association, the 50 companies that were granted the most design patents in 2013 included Apple, Samsung, Panasonic, Sony, Microsoft, Nike, Target, Toyota, Ford, Nissan and GM. Many of these companies also appear on the list of the top 50 trademark registrants for the same period. This suggests that the same interests that motivate trademark filings may also motivate increased design patent applications.

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Recent design patent litigation has centred on the above products

Recent trends in design patent litigation

Companies in the sectors most active in patenting innovative designs have also been turning to the courts to enforce their patents. Hundreds of design patent lawsuits are filed each year, with 2014 seeing a flood of cases involving patented designs. In the technology sector, cases have been filed to protect designs for mobile phone accessories such as cigarette lighter adapters and charging stations. In the automotive sector, both auto parts (eg, wheels and radiators) and accessories (eg, decorative rims and motorcycle saddlebags) are being litigated. Finally, a large number of cases were filed in the last few years to enforce design patents for apparel and accessories, most commonly shoes, jewellery and glasses. Examples of specific products that have been the subject of recent design patent litigation include the Skechers GO WALK shoe, a “convertible T-shirt,” Oakley sunglasses, “toe socks,” ballpoint pens, golf carts, women’s shapewear, motorcycle handlebars and even an “eyelash” accessory for car headlights. In addition, a number of recent cases have been brought to protect design elements of functional products, such as coat hangers, perfume bottles, furniture, sports equipment and razor blade cartridges.

Unsurprisingly, among the companies filing briefs supporting Apple’s defence of its recovery of Samsung’s total profits are apparel companies that have been active in enforcing their design patents, including Crocs, Deckers (makers of UGG footwear) and Oakley.

An important component of IP enforcement

As demonstrated by Apple v Samsung – where Apple recovered damages for design patent, utility patent and trade dress infringement – design patents can be effectively enforced in conjunction with other types of intellectual property. Design patent and trade dress claims are commonly asserted together because of their complementary nature. Given that design patents protect novel designs and trade dress protects the distinctive overall appearance of a product or its packaging, it is easy to see why products such as shoes and handbags can be protected by both. It is also possible to assert design patent claims together with other types of intellectual property. For example, copyrights protect creative works which can be featured within a product protected by design patent, such as a particular floral pattern on a shoe. Copyright protection can also apply to elements of a design that can be separated from an otherwise utilitarian product. In addition, products that are commonly protected by design patents, such as apparel and auto parts, may feature trademarked words and symbols and/or simultaneously enjoy the protection of utility patents. Indeed, it is possible for a single manufactured article to be covered by all of these types of intellectual property. A shoe could feature a copyrighted pattern, a word or design mark, an ornamental buckle protected by design patent and sole construction protected by a utility patent, while the overall “look and feel” could be protected by trade dress.

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Among the companies filing briefs supporting Apple’s defence of its recovery of Samsung’s total profits are companies that have been active in enforcing their design patents

Many cases filed in 2014 combined design patent claims with other IP claims. For example, Oakley has been active in suing to protect its sunglasses and eyeglasses by combining design patent, trademark and trade dress claims. In one of these, Oakley alleged that the defendant manufactured and sold sunglasses that infringed Oakley’s design patent for eyeglasses as well as the trademarked ‘O’ design on the earpiece. Several apparel companies – including Deckers, Ecco and Skechers – have recently filed cases claiming that knock-off shoes violate their design patents and trade dress.

Some recent suits have also combined design patent and copyright claims. For example, the manufacturer of a portable herbal vaporiser recently sued for infringement of its patent on the overall design of the e-cigarette, as well as the copyright on the artwork included on the product and packaging. Other recent cases have asserted both design and utility patents: one apparel manufacturer asserted design patent claims for “toe socks” in conjunction with a utility patent for socks with rubber dots on the bottom of the soles. Other plaintiffs in recent design patent cases have sought declaratory relief in the form of a court order that their product does not infringe a particular design patent.

However, companies should be careful when applying for and asserting multiple types of IP protection over a single product, as there are some inherent tensions in the requirements for each. For example, while trade dress and design patents cover only non-functional designs and copyright protects creative expressions, the subject of a utility patent must be functional, given that these protect only “useful inventions”. Therefore, obtaining a utility patent in addition to a design patent or trademark on a product or a particular aspect of a product can serve as evidence of functionality and lead to invalidation of the design patent and trademark. A recent Federal Circuit case, In re Becton, Dickinson & Co (675 F 3d 1368 (Fed Cir 2012)), confirmed that the existence of a utility patent is one factor that should be used to determine whether a design is functional. And the tension in the requirements for utility patents and trademarks was recognised by the Supreme Court nearly 15 years ago in TrafFix Devices, Inc v Marketing Displays, Inc (532 US 23 (2001)) – the court held that the existence of a utility patent (even an expired one) is “strong evidence” that a product’s features are functional and therefore do not qualify for trade dress protection.

Recent decisions affecting enforcement

Recent US case law has raised issues that are important to consider when applying for and enforcing design patents. Over the past few years, courts have attempted to clarify their own role in judging obviousness and infringement, as well as who exactly constitutes the ‘ordinary observer’ for the purposes of determining design patent infringement. There have also been important developments concerning design patent prosecution which companies should take into consideration when drafting and determining the scope of design patent applications.

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Design patent applications at the USPTO in 12 months

Obviousness

In MRC Innovations, Inc v Hunter Mfg, LLP (747 F 3d 1326 (Fed Cir 2014)) the Federal Circuit affirmed the trial court’s finding that the claimed invention of the design of canine football jerseys was obvious in light of prior art made up of similar pet sports jerseys. MRC has petitioned the Supreme Court for certiorari to clarify whether courts are required to provide analysis to justify combining the known elements from the prior art when determining whether a design is obvious – as they must when analysing utility patents. In High Point Design LLC v Buyers Direct, Inc (730 F 3d 1301 (Fed Cir 2013)), the court found that the trial court erred by failing to include enough detail in its description of the claimed design “to evoke a visual image consonant with that design” when judging obviousness. The Federal Circuit also instructed the district court to do a side-by-side comparison to determine whether the primary prior art reference and the claimed design evoked “basically the same” visual impression. This holding may be in tension with Egyptian Goddess, which cautioned courts against attempting to construe a design patent claim by providing a detailed description of the claimed design when judging infringement, given the inherent difficulties of translating a drawing of the design into words.

Ordinary observer

Lower courts have also struggled to determine who exactly constitutes an ‘ordinary observer’ who judges infringement. For example, in Poly-America, LP v API Industries, Inc (2014 WL 3891181 (D Del 2014)) the court held, in an issue of first impression, that the ordinary observer in that case was the end retail consumer, not the manufacturer, because the accused design was a major part of the end product viewed and purchased by consumers. If, instead, the accused design was only one of many other elements making up the final product, the ordinary observer might be the manufacturer that purchased the accused design as a standalone product. This is an important factor to consider when determining whether to pursue design patent litigation, particularly where the design patent covers only a small component of a consumer product.

Prosecution

In Pacific Coast Marine Windshields, Ltd v Malibu Boats, LLC (739 F 3d 694 (Fed Cir 2014)) the court determined that prosecution history estoppel applies to design patents as well as utility patents. This holding counsels against a strategy of initially claiming multiple embodiments of a single design. If the patent examiner finds that the multiple embodiments are distinct from one another, the applicant will then have to file separate applications or risk being barred from later broadening the scope of its claims.

While detailed claim construction in design patent cases is relatively rare, some recent cases have tackled this issue. For example, the holding in Times Three Clothier, LLC v Spanx, Inc (2014 WL 1688130 at *7-8 (SDNY April 29 2014)) highlighted the importance of including consistent drawings on patent applications; in this case the court invalidated two design patents for indefiniteness due to seemingly minor inconsistencies in figures showing various perspectives of the same design for women’s shapewear, in one instance noting that: “Figures 1 and 2… show a straight horizontal line … [y]et, [other figures] … show an ornamental line angled up at approximately 30 degrees.” While recognising that interpreting claims in design patent cases is usually unnecessary, the court noted that it did so in order to resolve specific issues raised by the parties.

ITC enforcement

International Trade Commission (ITC) proceedings are another avenue through which both design patent and trademark rights can be asserted. The ITC is empowered to block the import of IP-infringing products. While trademarks are rarely at issue in ITC proceedings, the past few years have seen a few high-profile ITC cases involving trademarks, including an investigation opened in 2014 regarding Converse’s Chuck Taylor shoes, which Converse claims feature several elements protected by trade dress. Other companies to take advantage of ITC proceedings to protect their trademarks are Louis Vuitton Malletier SA (which won a general exclusion order against all counterfeiters of products featuring its monogram trademark in 2012) and Clorox.

An ITC investigation can result only in an injunction preventing the import of the infringing products

While ITC investigations into utility patents are still far more common than those regarding design patents, companies are recognising that it can be beneficial to pursue differing remedies simultaneously in federal court and the ITC. In contrast to federal court litigation, where money damages are available, an ITC investigation can result only in an injunction preventing the import of the infringing products. However, this is often a critical blow and ITC proceedings are generally resolved much more quickly than litigation – generally within 12 to 18 months.

Conclusion

As more and more companies are recognising, design patents can be an important part of an overall IP enforcement scheme, particularly when they are used to protect products in conjunction with other types of intellectual property, such as trade dress and copyright.

A strategic and complementary approach is key to enjoy maximum protection, and the recent trends and court decisions described above help to frame the questions that companies should be asking themselves in order to develop such a strategy: what types of IP protections could apply to our product and how can we avoid the risk of invalidation? How should we draft the application? How can the intellectual property be enforced, against whom and in what venue?

Jennifer A Golinveaux is a partner and Diana L Hughes an associate at Winston & Strawn. Dana L Cook-Milligan assisted in the research for this article [email protected] [email protected]

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