Navigating Functionality in Design Patent Prosecution and Litigation

Transcription

1 Presenting a live 90-minute webinar with interactive Q&A Navigating Functionality in Design Patent Prosecution and Litigation Evaluating Ornamentality vs. Functionality, Overcoming Obviousness Challenges, Leveraging Recent Court Treatment TUESDAY, DECEMBER 8, pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Tracy-Gene G. Durkin, Director, Sterne Kessler Goldstein & Fox, Washington, D.C. Daniel A. Gajewski, Sterne Kessler Goldstein & Fox, Washington, D.C. Lance Rake, The University of Kansas, Lawrence, Kan. The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions ed to registrants for additional information. If you have any questions, please contact Customer Service at ext. 10.

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5 Navigating Functionality in Design Patent Prosecution and Litigation Tracy-Gene G. Durkin Daniel A. Gajewski Lance G. Rake

6 How does functionality apply to design patents? Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title - 35 U.S.C. 171 Functionality is not mentioned in the statute or rules, it is a doctrine from case law interpreting the word ornamental Functionality arises in two contexts: Validity challenges and patentability under 171 Claim construction before the court and at the USPTO Similar standards apply in both prosecution and litigation but are approached differently 6

7 Validity Challenges A design patent is invalid if: the claimed design is dictated by the utilitarian purpose of the article i.e. the design is primarily functional the fact that a patented article serves a function is a prerequisite of design patentability, not a defeat thereof functionality of the article itself must not be confused with functionality of the article s design L.A. Gear, Inc. v. Thom McAn Shoe Co. (Fed. Cir. 1993) When the overall appearance of a design is dictated by its function it is not ornamental 7

8 High Point Design LLC v. Buyers Direct, Inc. (Fed. Cir. 2013) High Point sued Buyers Direct (BDI) for declaratory judgment of non-infringement and invalidity D598,183 SNOOZIES FUZZY BABBA 8

9 District Court Decision SDNY held patent invalid because all major characteristics of th[e] slipper [in the patent] are functional Completely covers the foot Provides warmth and protection Fuzzy interior and overflow provides comfort Not primarily ornamental 9

10 Federal Circuit Decision Fed Cir reversed the finding of invalidity based on functionality District Court assessed the design s primary features rather than the design itself Distinction exists between functionality of an article or its features (OK) and of the design (Not OK), otherwise useful articles would not be patentable through design patent Avia Grp. Int l, Inc. v. L.A. Gear Cal., Inc., Fed Cir 1988 Case remanded to SDNY but functionality was not raised again 10

11 D603,102 Rip-It Holdings design Rip-It Holdings, LLC v. Wilson Hunt International, Ltd. (MD Florida 2012) Champo Softball Mask Wilson Hunt design 11 Marketed as does not hinder your ability to see the ball No alternatives have same function Substantial question of patent validity presented Preliminary injunction denied

12 D596,802 Telebrands design Telebrands Corp v. Del Laboratories, Inc. (S.D. New York 2011) Utility patent application for product by exclusive licensor referenced functionality of ovoid design Alternative designs with different shapes Motion for SJ on invalidity denied Pedi-Perfect Del Laboratories design 12

13 Claim Construction Whether a design patent is infringed is determined by first construing the claim to the design, when appropriate, and then comparing it to the design of the accused device. Elmer v. ICC Fabricating, Inc. (Fed. Cir. 1995) Where a design contains both functional and nonfunctional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent OddzOn Prods., Inc. v. Just Toys, Inc. (Fed. Cir. 1997) What do you do with the functional aspects once identified? 13

14 Richardson v. Stanley Works, Inc. (Fed. Cir. 2010) D507,167 Richardson design District Court claim construction factored out purely functional aspects of Richardson design: handle hammer head jaw crowbar No infringement D562,101 Stanley Works design 14

15 Apple Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. 2015) Apple sued Samsung for infringement of 3 design patents On appeal, Samsung argued that under Richardson the identified functional aspects of the patented designs should be ignored from the claim scope 15

16 Apple Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. 2015) Sample jury instruction on claim construction: The D 677 Patent claims the ornamental design of an electronic device as shown in Figures 1-8. The broken lines in the D 677 Patent constitute unclaimed subject matter. The use of solid black surface shading on the D 677 Patent represents the color black. The use of oblique line shading on the D 677 Patent is used to show a transparent, translucent, or highly polished or reflective surface. 16

17 Federal Circuit Apple Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. 2015) Richardson did not exclude them in their entirety Claim construction included the ornamental aspects of them Standard shape of hammer-head Diamond-shaped flare of crow-bar and top of jaw Rounded neck and Plain undecorated handle Orientation of the crow-bar relative to the head Discounting functional elements must not convert overall infringement test to an element-by-element comparison 17

18 Functionality in Litigation: Bottom Line Functionality can be a viable defense to patent infringement and a factor in claim construction In either case, the design must be considered as a whole, not elementby-element Fact that a design performs a function (e.g. protect the foot) does not make the design ineligible for patent protection Carefully prosecute related utility patent applications Carefully review advertising claims touting useful features of a design All non-functional aspects of a design must be considered in claim construction, even those of functional features A best practice for patent applicants may be to not claim purely functional features in prosecution to avoid the issue 18

19 Doctrine in Prosecution Rejections under 171 Lacks ornamentality Hidden in use Rejections under 102 & 103 Ignoring portions that lack ornamentality or are hidden in use 19

20 Doctrine in Prosecution The Supreme Court finds 171 s ornamentality requirement satisfied where a design s appearance is not dictated by function Bonito Boats, Inc. v. Thunder Craft Boats, Inc. (S. Ct. 1989) The Federal Circuit has applied this to mean that the design must not be the only possible form of the article that could perform its function Seiko Epson Corp. v. Nu-Kote Inter., Inc. (Fed. Cir. 1999) The Federal Circuit has also described this standard using different language, leading to some inconsistency in how the USPTO applies it 20

21 171 Rejection: Lacks Ornamentality USPTO relies on In re Carletti (CCPA 1964) for the proposition that designs must be created for the purpose of ornamenting But Carletti actually says the reverse. It concludes an article was not created for purpose of ornamenting when its design was dictated solely by function 21

22 171 Rejection: Lacks Ornamentality USPTO cites L.A. Gear for the proposition that designs must be primarily ornamental But L.A. Gear holds the ultimate question to be whether the design is dictated by utilitarian purpose 22

23 171 Rejection: Hidden in Use The USPTO relies on In re Cornwall (CCPA 1956) for making a rejection that uses a design s lack of visibility during its normal and intended use to show that its design is not a matter of concern. The Fed Cir, in In re Webb (1990) considers normal and intended use to include any point in the article s useful life from manufacture to destruction, including sale and display 23

24 102 & 103 Rejections USPTO approach: separate functional aspects from ornamental aspects Example: Car Bumper 24

25 Questions Raised: 102 & 103 Rejections Can the ornamentality doctrine be applied to factor out claimed parts of a design? Apple v. Samsung: Functional features not excluded L. A. Gear: View the claimed design in its entirety At what point in an obviousness analysis is factoring out permitted (if at all)? In re Rosen (CCPA 1982): Claimed design as a whole must be considered to identify a primary reference 25

26 Addressing Ornamentality Challenges When confronted with a functionality challenge, remember: Ornamentality is the threshold, not non-functionality Ornamental and functional can largely overlap Ask: Is the design really dictated solely by its function? 26

27 Addressing Ornamentality Challenges: On the Law Dictated solely by function is the standard Both Carletti and L.A. Gear follow this standard, they do not create new matter of concern and primarily functional standards Keep examination to application content Evidence of intended use for a design should not be considered in assessing functionality Berry Sterling Corp. v. Pescor Plastics, Inc. (Fed. Cir. 1997) 27

28 Level of Abstraction Addressing Ornamentality Challenges: On the Facts Is the USPTO considering too specific a function? Sale and Display, Third-Party Commentary Show the design is a matter of concern Alternative designs Show the design is not dictated solely by its function Show evidence that alternative designs are possible Expert declaration, other patents, third party advertising, commissioned work, etc. 28

29 Thank you Questions? Tracy-Gene G. Durkin Daniel A. Gajewski Lance G. Rake 29