Last week was the United States Patent and Trademark Office’s annual Design Day where they hosted speakers on the last year in design patent practice. The following cases from the Federal Circuit, the Patent Trial and Appeal Board, and District Courts were highlighted throughout the day for their impact on design patent practice. For more information and analysis regarding any of these cases and the impact they may have on your IP rights, please feel free to reach out to Maier & Maier.

Federal Circuit Cases:

Advantek Mktg., Inc. v. Shanghai Walk-Long Tools Co.

Holding: A restriction requirement response electing for broader coverage instead of embodiments with extra features does not estop a patent holder from asserting against infringing designs with the non-elected extra features.

In re Maatita

Holding: A § 112 indefiniteness rejection based on three dimensional flexibility of a single view design claim was overruled because § 112 only applies “if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” For practice purposes, it is important to note that in some situations, a single view may be used to obtain broader protections.

Pending-Automotive Body Parts Association (“ABPA”) v. Ford Global Technologies, LLC

Issue 1. Are replacement components eligible for design patent protection?

Lower Court Holding: Yes, design patents may protect replacement components because a). the design of the replacement components was relevant at the time of the original sale which constitutes a matter of concern b). the aesthetic-function doctrine does not extend to design patents and c). the physical need to fit as a replacement is insufficient to establish that the design is dictated by function.

Issue 2. Do design patents for replacement parts violate the exhaustion doctrine?

Lower Court Holding: No, design patents for replacement components do not violate the exhaustion doctrine because they protect the individual components, not the purchased vehicle as a whole.

Pending-Hafco Foundry and Machine Co. v. GMS Mine Repair

Issue: Are functional features of a design patent filtered out when determining whether a product infringes?

Pending-Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc.

Issue: Is corroborating expert testimony necessary for a 131 declaration to swear behind and establish priority of invention?

PTAB Proceedings:

MacSports v. Idea Nuova

Denying petition for failure to account for all views of the claimed design in the § 103 challenge and failure to acknowledge and discuss differences with claimed design in § 102 challenge.

Campbell Soup Company v. Gamon Plus, Inc.

Prior art of a can display was insufficient to invalidate Cambell’s design patent, even though it showed a similar can display, because there was no can included in the prior art despite the inherent need for a can to be present for its intended use.

C&D Zodiac, Inc. v. B/E Aerospace, Inc.

Finding figures from previous utility patent alone were insufficient to establish a priority date, because they lacked a written description for the claimed design. The loss of priority date led to PGR eligibility, and ultimately invalidity due to a prior sale.

Ex Parte Sonos

Priority to previous patent applications is based on the common elements between designs embodiments of the priority and new application, not the differences between design embodiments in the two. Examiner’s failure to consider these common elements led to the PTAB’s acceptance of priority claim.

District Court Cases:

Wine Enthusiast v. Vinotemp

Infringement claim against a product with a black surface on a wine rack of a design patent for a black surface on a wine rack was dismissed because the design patent included a specific shape to the surface not present in the product.

Lanard v. Toys R Us

Applying the Egyptian Goddess infringement analysis to find that while two chalk holders that look like no. 2 pencils share a broad design concept, the similarities stem from function and well-established prior art, and do not infringe.

Daimler v. A-Z Wheels LLC

Applying Egyptian Goddess infringement analysis to find that the patented design and accused product were substantially similar and that there were no sharp distinguishing features between the prior art and the accused product nor the design patent itself.

Bobcar v. Aardvark

Applying the “Ordinary Observer” standard to conclude that the design patent and the provided images are ‘sufficiently similar as to deceive an ordinary observer” and deny the defendant’s motion to dismiss under 12(b)(6) for failure to state a claim. Additionally, finding no sanctions against plaintiff for bringing suit despite knowledge of prior art references which defendant had sent to plaintiff prior to their filing suit, because there were sufficiently clear differences from the prior publications to prevent the suit from being frivolous with no chance for success.

Since his official appointment to his post as Chief Judge of the PTAB, Boalick has wasted no time in making his mark. Beginning the very day his permanent appointment became official last month, the PTAB has issued a number of precedential opinions. Most notably, the new Precedential Opinion Panel or POP (created in September’s updates to the Standard Operating Procedures) issued their first opinion.

The POP (which includes Chief Judge Boalick and his Deputy Jacqueline Bonilla among others) issued its first decision in an Inter Partes Review between Proppant Express Investments and Oren Technologies (IPR2018-00914, Paper 38). At issue in the decision was the hot button same party joinder issue. In the decision, the POP declared that 35 U.S.C. § 315(c) provides discretion for the Board to allow a petitioner to join a proceeding in which it is already a party, as well as the joinder of new issues into an existing proceeding. The decision emphasized the rarity in which such a circumstance would come about and identified fairness, undue prejudice, and the § 315(b) timebar as important considerations when deciding whether to exercise such discretion.

Among the other newly precedential opinions are the following:

Adello Biologics LLC v. Amgen Inc., Case PGR2019-00001 (PTAB Feb. 14, 2019) (Paper 11) (allowing update to Mandatory Notices without assigning a new filing date because omission of RPI was not in bad faith nor was it unduly prejudicial to Patent Owner)

Proppant Express Investments, LLC v. Oren Technologies, LLC, Case IPR2017-01917 (PTAB Feb. 13, 2019) (Paper 86) (finding no timebar because RPI added to petition would not have been timebarred if it had been added when it was originally filed and laying out factors relating to the related POP decision)

Ventex Co., Ltd. v. Columbia Sportswear North America, Inc., Case IPR2017-00651 (PTAB Jan. 24, 2019) (Paper 152) (dismissing Petition because omitted RPI would have been timebarred if named in original filing)

K-40 Electronics, LLC v. Escort, Inc., Case IPR2013-00203 (PTAB May 21, 2014) (Paper 34) (listing factors to be considered in permitting live testimony)

DePuy Synthes Products, Inc. v. MEDIDEA, L.L.C., Case IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29) (finding inventor testimony at oral hearing to be impermissible new evidence without previously provided declaration)

Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC, Case IPR2018-00816 (PTAB Jan. 8, 2019) (Paper 19) (procedural overview for submission of new evidence and showing of good cause)

These and more precedential decisions are available on the PTAB’s Precedential and Informative Decisions page.

Scott Boalick has officially begun his permanent term as Chief Judge of the Patent Trial and Appeal Board. After having served in an interim role since September, the USPTO made his appointment official last month.

Boalick started at the PTAB in 2007 and has since acted as an administrative patent judge, a vice chief judge, and as deputy chief judge. Prior to joining the PTAB, he was a patent attorney for the U.S. Navy after having worked in private practice and serving as a law clerk in the Federal Circuit.

In the press release, Director Iancu highlighted Boalick’s marching orders for PTAB improvement stating that “Chief Judge Boalick will continue leading PTAB’s efforts to ensure that its proceedings are balanced and transparent, while also working toward a one-year pendency for completion of ex parte appeals, and implementing the Office’s new § 101 Guidance.”

To help him achieve those goals, Boalick will continue to work with his now permanent Deputy Chief Judge Jacqueline Bonilla, who has also been in an interim role since September.

“I look forward to working with Chief Judge Boalick, Deputy Chief Judge Bonilla, as well as the rest of the Patent Trial and Appeal Board as we continue to strive for excellence and a well-balanced patent system,” said Iancu.

Fast food companies have been actively asserting their trademarks, recently highlighted by noteworthy activity by both McDonald’s and In-N-Out.

McDonald’s aggressive defense of its trademarks hit a snag recently as the EUIPO canceled their trademark for “Big Mac” for failing to provide sufficient evidence of use. In their argument, McDonald’s relied mainly on affidavits from employees, Wikipedia entries, and screenshots of posters and websites. In their ruling, the EUIPO pointed out that neither affidavits from employees nor Wikipedia entries are viewed as reliable evidence due to their biases and unreliability respectively. For screenshots, the EUIPO took issue with the limited geographic scope (only the UK, France, and Germany were represented) and the failure to show a way to purchase or provide any evidence of a purchase.

The loss came after McDonald’s attempted to assert the trademark against the Irish restaurant chain “Supermac’s” as they attempted to expand out of Ireland and into the EU. With the “Big Mac” trademark now nullified, Supermac’s is free to do so. They are not the only ones who can use the term “Big Mac” now, as its available to anyone within the EU. Burger has notably taken advantage of this, with certain locations replacing item names with variants of “Big Mac”, including “Like a Big Mac, But Actually Big”, “The Burger Big Mac Wished It Was”, and even “Kind of Like a Big Mac But Juicier and Tastier”. McDonald’s is still able to appeal the decision and will likely do so soon.

Meanwhile, In-N-Out filed a trademark infringement claim against Puma for two recently launched shoes. The subject sneakers are named the “Cali-O Drive Thru CC” and “California Drive-Thru”, are white with red and yellow accent and palm trees along the laces, and advertisements showed the shoes walking through hills of burgers. Neither shoe is still available on the Puma website. Unlike similar novelty shoes by Adidas (Game of Thrones) and Nike (NASA) made in respective partnerships, Puma and In-N-Out had made no agreement licensing the trade dress for the shoes.

On March 13, 2019, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, testified before the U.S. Senate’s Committee on the Judiciary’s subcommittee on Intellectual Property to discuss the USPTO and the current state of patent and trademark law in the United States. In their introductions, Chairman Thom Tillis and Ranking Member Chris Coons both lauded the work of Director Iancu, specifically citing the harmonization of PTAB claim construction with the ITC and District Court, the §101 patent subject matter eligibility guidance issued by the USPTO to improve reliability and predictability for inventors, and the 10 millionth issued patent celebration as noteworthy successes over the last year. Between Iancu’s opening statement and the ensuing discussions with the committee, the hearing highlighted several areas of improvement for Iancu and the legislature to focus on in the near future.

Modernization of the USPTO

One of the most involved discussions of the day was the modernization of the USPTO. Citing the continual game of catch-up in technology that the government faces, Iancu identified his goal of leapfrogging the current industry standards to help the USPTO keep pace as things continue to change. Specifically, Iancu aims to 1). Stabilize the infrastructure itself and 2). Implement new measures like Artificial Intelligence into the USPTO procedures.

Stabilizing the infrastructure has the dual goals of both reducing the likelihood of system shutdowns and increasing the speed of getting it back online. These are both vital as more of the submissions and communications rely on the electronic submission standards and as more examiners work remotely.

Regarding Artificial Intelligence, Iancu identified multiple uses for the USPTO to stay ahead of the standards. First, he cited the ability to use AI to clean up the Trademark Registry. Recent focus has been placed on foreign filings of trademark applications in bad faith with photoshopped use submissions. Iancu referenced new programming that could identify photoshopped applications and help flag them for review and reduce the clutter on the Registry. Additionally, Iancu referenced the potential use of AI to identify prior art during the patent prosecution process, to greatly reduce the burden on examiners to manually go through the related art.

In achieving these goals, Iancu referenced specific task forces for these projects, a new CIO specifically tasked with overseeing the infrastructure review and upgrade, and outside contractors assisting in all efforts.

Innovation Diversity

Spurred by a recently released USPTO analysis on female inventorship, Senator Mazie Hirono and Director Iancu discussed the issues of equal representation both in inventorship and at the USPTO itself. Citing the report’s findings, the two identified problematic statistics where only 21% of patents included at least one female inventor and only 12% of named inventors were female in 2016. Especially troubling, as noted by Director Iancu, is the fact that even when normalized for representation in the field, there is still a gap between industry representation and inventorship. These numbers are echoed in other underrepresented populations of minorities, while low income patent owners are especially exposed to serial PTAB petitions from patent trolls and deep pocket entities.

Director Iancu advocated for steps that would highlight the issue, promote national debate, and begin working on programming to bridge the gap. Noteworthy is that the most growth has occurred in isolated fields where female inventorship already existed, suggesting mentorship programs may be an effective piece of a potential solution to help guide female and minority inventors through the process. Senator Hirono referenced bills she has introduced to support minorities and women in STEM to curb the dropouts at each level of education, while Chairman Tillis emphasized the need to address the issue further while highlighting a “Women in IP” hearing this coming April.

Further Clarity On §101

Despite praising the USPTO Guidance on §101 subject matter eligibility, both Director Iancu and the committee highlighted the need for further work on the issue. While the guidance has been met with success at the USPTO in both examination and at the PTAB, uncertainty over how it will be met in the Federal Circuit could pose issues in the future.

Tillis and Coons identified forthcoming legislation as soon as this summer that may bring clarity to the issue, which Director Iancu appreciated, deferring decision making on whether codification of his decisions regarding §101, the Trial Guide, etc would be of benefit for the patent system as a whole.

All parties involved agreed that the chilling effect of uncertainty and unpredictability with respect to subject matter eligibility was a threat to the continued growth of the patent system, and in turn the economic growth and stability for the U.S. Coons was especially concerned about the area of medical diagnostics with respect to subject matter eligibility, while general agreement highlighted the impact on computer implemented devices as well.

Among the other topics discussed were the success of the TEAPP program and potential expansion for examiners in Hawaii and Alaska, protocol for Iancu to address ethical concerns as a political appointee, and the balance between fueling medicinal innovation and preventing astronomical drug pricing.

Two recent Supreme Court decisions may have far reaching consequences for those looking to assert (or avoid) copyright infringement claims.

Registration Requirement

On March 4, 2019, the Court ruled on Fourth Estate Public Benefit Corp. v. Wall-Street.com, where it held that Copyright Infringement was only available after a copyright is registered at the Copyright Office. In the case before the Court, Fourth Estate Public Benefit (FEPB) had licensed articles to Wall-Street.com (WS). After the license was cancelled, WS kept the articles on their website provoking the infringement claim. At the time of FEPB’s claim, they had already submitted the application for registration, but it had not been fulfilled by the Copyright Office yet.

The decision rested on 17 U.S.C. 411(a), which states that no action for civil infringement “shall be instituted until . . . registration of the copyright claim has been made.” Despite FEPB’s argument that application for the registration would satisfy the statute, the Court unanimously ruled that the text required completed registration. The Court did allow for certain preregistration filings for copyrights specifically vulnerable to pre-registration infringement like movies, live broadcasts, and musical compositions.

Limitations for Damages

Also on March 4, 2019, the Court handed down its decision on Rimini Street, Inc. v. Oracle USA, Inc., where it held that the $12.8 million in awarded damages for litigation expenses including expert witnesses, e-discovery, and jury consultants exceeded the statutory award. At issue here was the meaning of “full costs” available for copyright infringement under 17 U.S.C. 505. Despite the Ninth Circuit’s acknowledgment that e-discovery, expert witnesses, and jury consultants fell outside the bounds of the six categories of costs identified in 28 U.S.C. 1821 and 1920, they upheld the award as representative of “full costs”. The Court disagreed, ruling that the phrase “full costs” referred to the six categorical allowances under 1821 and 1920. In so doing, the Court removed the $12.8 million award for litigation costs, leaving Oracle with only the other $81.9 million for copyright infringement damages, attorney’s fees, and costs.