Fielding and Labelling Designs
District Court order granted summary judgement on design patent validity, excluding prior art from the field of resemblance, focusing instead on field of endeavor;
Baseball bats do not qualify as prior art for a design patent for a “drinking vessel” which resembles a baseball bat;
Fact issues precluded summary judgement on design patent infringement where judge identified seven differences an ordinary observer would notice, including ornamental logo placement and appearance.
Federal Circuit considering related issues of relevant prior art for infringement comparison and labelling, recently argued and submitted on appeal in Columbia v. Seirus.
On January 11, 2023, in design patent infringement case Samiam Group, LLC v. Coopersburg. Assoc., Inc. (5:22-cv-2256, E.D. Pa.) a United States District Judge determined that fact issues remained as to infringement but decided on summary judgement a design patent to be valid, excluding prior art from the field of resemblance and finding that defendant had failed to submit clear and convincing evidence to overcome the presumption of validity and that no reasonable jury could find otherwise where prior art from the field of use appeared “quite different.”
The Court noted that the problem or goal of the designer was to design a drinking vessel that resembled a baseball bat. “Whereas a baseball bat belongs to the field of sporting and recreational play of hitting a ball, the patented design belongs to the field of consuming beverages.”
Citing K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364 (Fed. Cir. 2012), a case where both utility and design patents were asserted, which cited a line of cases involving utility patents holding that art for obviousness must be analogous, rather than the Federal Circuit’s more recent design patent anticipation jurisprudence In re SurgiSil, discussed below, the district court excluded resemblance prior art and focused on field of use prior art.
Evaluating whether to consider prior art references for validity, the district court identified the relevant question as whether the reference logically would have commended itself to the attention of a designer of ordinary skill who designs articles of the type involved in considering their problem- if it would, a reference can qualify as prior art because it is reasonably pertinent to the particular problem the designer is involved with.
The district court concluded that any designer of ordinary skill that intended to design a baseball bat-shaped drinking vessel would consider other drinking vessels also shaped like baseball bats.
Then comparing such prior art references to the patented design, describing one being substantially shorter and one as oriented horizontally, with opening at the opposite handle end and capped, the judge concluded that that they don’t anticipate the patented design or make it obvious.
Article of Manufacture - AOM
Under 35 U.S.C. 171, 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.
Identifying the article of manufacture for design patents has taken on more significance following recent case decisions and might now more explicitly impact (i) prior art analysis for anticipation (novelty) and obviousness, (ii) infringement scope and comparison prior art, and (iii) damages from an infringer’s profit.
AOM for Damages
First, in the context of deign patent damages under §289 (which awards infringer’s total profit gained from applying without authorization the patented design to any article of manufacture for the purpose of sale), in Samsung v. Apple (2016) the Supreme Court held that the term “article of manufacture” is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not and thus reading “article of manufacture” to cover only an end product sold to a consumer gives too narrow a meaning to the phrase. Therefore, it held that in the case of a multicomponent product, the relevant “article of manufacture” for arriving at a §289 damages award need not be the end product sold to the consumer but may be only a component of that product. Thus, arriving at a damages award under §289 involves two steps: First, Identify the article of manufacture to which the infringed design has been applied; and Second, Calculate the infringer’s total profit on that article of manufacture. The Court declined to set out how to conduct either step, but the Solicitor General proposed a test which numerous district courts have now followed which also includes evaluating the article of manufacture of the patented design.
AOM for Infringement
Infringement scope was limited to related articles in Curver Luxembourg Sarl v. Home Expressions, Inc., when the Federal Circuit held that where the claim language supplies the only instance of an article of manufacture which appears nowhere in the figures, enforcement scope is limited. During prosecution of the litigated design patent, entitled “Pattern for a Chair” the application was amended to identify “chair” as the relevant article of manufacture after the Examiner objected to “furniture” for lack of specificity. Subsequently in litigation, the design patent was estopped from enforcement against baskets which arguably exhibited substantially the same pattern as in the design patent. 938 F.3d 1334 (Fed. Cir. 2019)
AOM for Validity
Even more recently, in the appeal In re SurgiSil, contrary to longstanding precedent that any field of prior art can anticipate a patent claim, the Federal Circuit decided that for design patent anticipation, a reference must be analogous. By correlation, for infringement analysis, the relevant comparison prior art should also be analogous, and an accused product which is not analogous, even having the same or similar design or appearance, might not infringe. 14 F.4th 1380 (Fed. Cir. 2021).
Takeaway: care should be given when selecting which article(s) of manufacture to identify in a design patent application, considering various possible infringement scenarios when designs are applied to multiple products with different fields of use, and whether more than one design patent is advisable to cover infringement by different objects and infringement in digital contexts.
Design Patent Infringement
The design patent infringement test comes from Gorham v. White, 81 US 511 (1872): “If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same -- if the resemblance is such as to deceive such an observer and sufficient to induce him to purchase one supposing it to be the other -- the one first patented is infringed by the other.”
In Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) the Federal Circuit refined this “ordinary observer” infringement test, noting that when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art. Where there are many examples of similar prior art designs, differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.
Arguably, in the litigation at hand, the patented and accused Beverage Bat designs bear closer resemblance to each other than to the prior art.
Alas, the district court did not reach comparison prior art because it set forth seven differences which an ordinary observer could notice and concluded they create a genuine dispute as to material facts whether the accused design infringes.
Differences noted include that the accused design has bumps along its handle, has a different overall profile, has visual transitions where its barrel tapers into its handle (arguably difficult to see in the photographs but apparent in person); overall cylindrical profile compared to a gradual flare of the patented design, completely hollow, as opposed to the partially hollow claimed design, and that the accused design has both embossed logos on its barrel and a sticker of defendant’s logo.
Regarding the latter, the district court cited Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., where the Federal Circuit remanded for the fact finder to consider “an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one.” 942 F.3d 1119, 1131 (Fed Cir. 2019). Coincidentally, Columbia was appealed again to the Federal Circuit and oral argument proceeded on Thursday, January 12, 2023, with Columbia arguing the jury should have been instructed to exclude materials that are not heat reflective as called for in its design patent from comparison art, and that the jury was not properly instructed on infringement because in the case of labelling, it was not instructed that trademark confusion as to source is not pertinent to the Gorham ordinary observer test, i.e., if the resemblance is such as to deceive such an observer and sufficient to induce him to purchase one supposing it to be the other.
The Beverage Bat defendant also argued that it is entitled to summary judgement of noninfringement because the USPTO allowed a design patent application it filed for its own design over the asserted patent, concluding that defendant’s design was neither anticipated by nor obvious over the asserted patent. Nevertheless the district court concluded that allowance does not preclude a finding of patent infringement per se.
Takeaway: care should be given when illustrating a claimed design to guard against infringement scenarios involving surface interruption and placement and appearance of logos. To cover overall appearance, consider illustrating but disclaiming text, logos and other surface interruption, and consider partial design protection to cover innovate appearance features.
For more information about design patent validity, infringement and claim drafting, contact the author below:
George Raynal, Principal
george.raynal@designlawgroup.com
© 2023 Saidman DesignLaw Group, LLC
