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.
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?
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.
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:
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.
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.
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.
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.