On September 14, 2021, U.S. Patent No. D930702, on a Display Screen Portion with Animated Graphical User Interface, issued to Wepay Global Payments LLC. The design patent covers two embodiments: The first embodiment consists of Figs. 1 and 2:
The second embodiment consists of Figs. 3 – 5:
Within weeks of the patent issuance Wepay sued PNC Bank NA. A month later Wepay sued PayPal Inc. and Samsung Electronics Co. Last month Wepay sued JPMorgan Chase Bank NA and Bank of America NA. Then last week, Wepay sued Apple (6:22-cv-00223 in W.D.Texas), Amazon (1:22-cv-01061 in N.D. Ill), Tesla (W.D. Texas), Walmart Stores Inc (1:22-cv-01062 in N.D. Ill.))., and McDonald’s Corp. (1:22-cv-01064 in N.D. Ill.)
With the patent’s liberal use of dashed lines, it appears that Figs. 1 and 3 cover any screen with the a QR code finder pattern – the three black squares in three corners of the QR code. Figs. 2 and 5 cover any screen with the figure “$0.00.” Fig. 4, oddly enough, covers any screen, with or without content.. Since QR codes have been around since 1994, and dollar signs even longer — since the late 18th century, it seems unlikely that this pattern did not appear on an apps display before the September 3, 2020, filing date of the ‘702 patent.
Wepay is asserting the ‘702 to its broadest extent. Looking, for example at the complaint against Apple,
Weoay asserts that Fig. 3 covers the appearance of a QR icon anywhere on a screen.
Wepay asserts that Fig. 4 covers any screen.
Wepay asserts that Fig. 5 covers the appearance of any screen with the text “$0.00”
It is hard to fathom what is ornamental about the three squares of a QR code, or the dollar sign or zeros. It is also hard to imagine that if the defendants are infringing now, that they were not infringing before the patent was filed, thus invalidating the patent.
Give the tremendous resources of the defendants, it is difficult to imagine that this patent will be found valid and infringe, we can only hope they don’t destroy the design patent system in the process.
In re SurgiSil LLP, [2020-1940] (October 4, 2021), the Federal Circuit reversed the Patent Trial and Appeal Board’s decision affirming an examiner’s rejection of SurgiSil’s design patent application, No. 29/491,550 an “ornamental design for a lip implant as shown and described.”
Applicant’s stunning new design for a lip implant.
The examiner rejected the sole claim of the application as anticipated by an art tool called a stump, shown in a Dick Blick catalog (Blick):
The “stump” from the Dick Blick Catalog.
.
The Board rejected SurgiSil’s argument that Blick could not anticipate because it disclosed a “very different” article of manufacture than a lip implant, reasoning that it is appropriate to ignore the identification of the article of manufacture in the claim language, because whether a reference is analogous art is irrelevant to whether that reference anticipates.
The Federal Circuit said that a design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract. The Federal Circuit noted that in Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1336 (Fed. Cir. 2019), it held that the design patent was limited to the particular article of manufacture identified in the claim, i.e., a chair, and not other furniture.
The Federal Circuit noted that the claim identified a lip implant, and the Board found that the application’s figure depicts a lip implant. As such, the claim is limited to lip implants and does not cover other articles of manufacture. There is no dispute that Blick discloses an art tool rather than a lip implant, so the Board’s anticipation finding therefore rested on an erroneous interpretation of the claim’s scope. Thus the Federal Circuit reversed the rejection of the claim.
As a result, a carefully selected title may allow a designer to get a patent where the design is similar to the designs for other types of protects. What’s in a name? Patentability.
In Campbell Soup Company v. Gamon Plus, Inc., [2020-2344, 2021-1019](August 19, 2021), the Federal Circuit reversed the PTAB determination that U.S. Design Patent Nos. D612,646 and D621,645 would not have been obvious.
The ’646 and ’645 patents, which each claim “[t]he ornamental design for a gravity feed dispenser display, as shown and described. The ‘646 patent has one figure:
U.S. Patent No. D612646, Fig. 1
Most of the features in the drawings are shown in dashed lines meaning that they are not part of the claimed design. In the ‘646 patent, the only parts claimed, were athe label area, the can stops, and one of the cans:
The ‘645 patent similarly excludes most of the drawing, except the label area and the cylindrical object in the display.
Linz, discloses a similar dislay rack. that has a similar display area and stops:
Linz, U.S. Patent No. D405,622
After buying $31 million of display racks from Gamon, Campbell’s began buying similar displays from Trinity, which caused Gamon to sue Campbells. Campbells petitioned for inter partes review of Gamon’s patents. The Board held that Appellants had failed to prove unpatentability, finding that Linz is not similar enough to the claimed designs to constitute a proper primary reference. The Federal Circuit vacated and remanded, reasoning that the “ever-so-slight differences” the Board identified between Linz and the claimed designs did not support its finding that Linz is not a proper primary reference. On remand, the Board again help that the patents had not been shown to be obvious. The Board reasoned Abbate was not a proper primary reference, and while Linz was a proper primary references, the claimed designs would not have been obvious over Linz alone or in combination with other references. The Board acknowledged that Linz had the same overall visual appearance as the claimed designs, but objective indicia nonobviousness, namely: commercial success, Campbell praise for the design, and the copying of the design.
On this second trip to the Federal Circuit the Federal Circuit agreed that Linz creatd the same overall visual appearance as the claimed designs. However, as to objective indicia, the Federal Circuit found that the Board erred in presuming a nexus between any commercial success and the claimed designs. The Board found that the unclaimed portions of the desings were insignificant to the ornamental design, but the Federal Circuit held that: “[i]n determining coextensiveness, the question is not whether unclaimed features are insignificant to a product’s ornamental design. The question is instead whether unclaimed features are “insignificant,” period. The Federal Circuit explained that the purpose of the coextensiveness requirement is to ensure that nexus is presumed only when the product “is the invention disclosed and claimed. The Federal Circuit said by limiting its analysis to ornamental significance, the Board simply did not answer the relevant question: whether the commercial produtc “is the invention.”
Under the correct legal standard, substantial evidence does not support the Board’s finding of coextensiveness, the Federal Circuit finding that at most, the claims cover only a small portion of the commercial product: its label area, cylindrical object, and stops. Thus it was improper to presume a nexus between the claimed invention and the commercial success, and it was up to Gamon to establish a nexus, which it failed to do.
The Board found nexus from the success and praise for the label area, but the Federal Circuit pointed out, this was not new. To establish nexus, Gamon needed to present evidence that the commercial success and praise of the commercial product derived from those “unique characteristics.” The evidence of commerical success presented was tied only to the label area, which was old. The Federal Circuit rejected testimony of the inventor tying the commercial success to the label area, noting that it was both self-serving and unssupported by any other evidence. Furthermore the Federal Circuit rejected the Boards view that in design patent cases, objective indicia need not be linked to the claimed design’s unique characteristics.
The Federal Circuit also relied upon evidence of copying as establishing non-obviousness, saying that even if there were copying, that alone did not overcome the strong evidence if obviousness.
Weighing all of the Graham factors, including (1) the Board’s finding that, from the perspective of a designer of ordinary skill, Linz creates the same overall visual impression as the claimed designs and (2) copying by Trinity of the claimed designs’ unique characteristics, the Federal Circuit concluded that the claimed designs would have been obvious over Linz.
On August 6, 2021, a California federal jury decided that Seirus Innovative Accessories did not infringe Columbia Sportswear’s U.S. Patent No. D657,093. Their verdict is notable because nearly four years ago, a jury reached the opposite result and awarded Colombia Sportswear $3.4 million before the Federal Circuit vacated and remanded the case.
Colombia’s patent was on a wave design applied to the lining of sportswear:
Seirus used a similar wave patter on its liners, but interspersed the design with its trademark:
The Federal Circuit vacated the verdict because the district court granted summary judgment of infringement, rather than allowing the jury to determine infringement, and because the district court misapplied L.A. Gear for the proposition that logos should be wholly disregarded in the design-infringement analysis.
The jury instruction was fairly standard, and did not even mention the possible effects of the presence of defendant’s trademark on the infringement determination.
In Lanard Toys Limited v. Dolgencorp LLC, [2019-1781](May 14, 2020), the Federal Circuit affirmed summary judgment for defedants with respect to Lanard’s claims for infringement of U.S. Patent No. D671167, infringement of Copyright Reg. No. VA 1-794-458, trade dress infringement, and statutory and common law unfair competition.
Defendant’s used the Lanard Chalk Pencil as a “reference sample” in designing its product.
Lanard sued for: (1) copyright infringement; (2) design patent infringement; (3) trade dress infringement; and (4) statutory and common law unfair competition under federal and state law. On cross motions for summary judgment relating to all claims, and the district court granted Defendants motion, holding that Defendants’ product does not infringe the D167 patent, that the ’458 copyright is invalid and alternatively not infringed by Ja-Ru’s product, that Ja-Ru’s product does not infringe Lanard’s trade dress, and that Lanard’s unfair competition claims fail because its other claims fail.
Determining whether a design patent has been infringed is a two-part test: (1) the court first construes the claim to determine its meaning and scope; (2) the fact finder then compares the properly construed claim to the accused design. In comparing the patented and accused design, the “ordinary observer” test is applied—i.e., infringement is found 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, inducing him to purchase one supposing it to be the other. The infringement analysis must compare the accused product to the patented design, not to a commercial embodiment.
On appeal Lanard argued that the district court court erred in its claim construction by eliminating elements of the design based on functionality and lack of novelty. Second, Lanard argued that the court erred in its infringement analysis by conducting an element-by-element comparison rather than comparing the overall designs. Third, Lanard argues that the court used a rejected “point of novelty” test to evaluate infringement.
The Federal Circuit said that where a de-sign contains both functional and non-functional 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, and found that the district court followed its claim construction directives “to a tee.” In an effort to clarify the scope of the protected subject matter, the court considered the functional features of the design, as well as the functional purpose of the writing utensil as a whole, including its proportions, considering the functionality of the “conical tapered piece,” “elongated body,” “ferrule,” “eraser,” “the design’s functional purpose as a writing utensil,” “the general thickness of the design,” and “the circular opening at the tapered end”). The district court meticulously acknowledged the ornamental aspects of each functional element, including “the co-lumnar shape of the eraser, the specific grooved appearance of the ferrule, the smooth surface and straight taper of the conical piece, and the specific proportional size of these elements in relation to each other.
The Federal Circuit noted that the district court considered its instruction that it is helpful to point out “various features of the claimed design as they relate to the accused design and the prior art, and considered the numerous prior art references cited by the examiner on the face of the D167 patent, as well as other designs identified by defendants, all directed to the shape and design of a pencil. The district court thus recognized that “the overall appearance of Lanard’s design is distinct from this prior art only in the precise proportions of its various elements in relation to each other, the size and ornamentation of the ferrule, and the particular size and shape of the conical tapered end. In so doing, the district court fleshed out and rejected Lanard’s attempt to distinguish its patent from the prior art by importing the “the chalk holder function of its design” into the construction of the claim.
The Federal Circuit said that the court noted that Lanard’s problem was that the design similarities stem from aspects of the design that are either functional or well-established in the prior art. The district court found that “the attention of the ordinary observer would be drawn to those aspects of the claimed de-sign that differ from the prior art, which would cause the distinctions between the patented and accused designs to be readily apparent. Based upon the evidence presented, the district court found that no reasonable fact finder could find that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design.
The Federal Circuit rejected Lanard’s argument that Complaint that the district court conducted an element-by-element comparison “in lieu of” a comparison of the overall design and appearance. The Federal Circuit noted that while the “ordinary observer” test is not an element-by-element comparison, it also does not ignore the reality that designs can, and often do, have both functional and ornamental aspects. Under the “ordinary observer” test, a court must consider the ornamental features and analyze how they impact the overall design, and the Federal Circuit said that is what the district court did, noting that in comparing the overall design of the patent with the overall design of the defendants’ product, the court necessarily considered how the ornamental differences in each element would impact the ordinary observer’s perception of the overall designs. The district court refocused its analysis on the correct context—the impact of the ornamental differences on the overall design—and concluded that “the differences between the patented and accused design take on greater significance.
The Federal Circuit also disagreed with Lanard’s contention that the court reinstated the “point of novelty” test in its infringement analysis. The Federal Circuit said it was true that it has rejected the notion that the “point of novelty” test is a free-standing test for design patent infringement, but added that it has never questioned the importance of considering the patented design and the accused design in the context of the prior art. The Federal Circuit concluded that the district court correctly balanced the need to consider the points of novelty while remaining focused on how an ordinary observer would view the overall design.
The Federal Circuit concluded that Lanard’s position is untenable because it seeks to exclude any chalk holder in the shape of a pencil and thus extend the scope of the D167 patent far beyond the statutorily protected “new, original and ornamental design.
On the copyright issue, the Federal Circuit agreed with the district court that the chalk holder was a useful article, and agreed with defendants that Lanard failed to identify any feature incorporated into the design of its copyright that is separate from the utilitarian chalk holder and that Lanard is merely attempting to assert copyright protection over the useful article itself. The Federal Circuit said that Lanard was essentially seeking to assert protection over any and all expressions of the idea of a pencil-shaped chalk holder, but that copyright protection does not extend to an “idea.” 17 U.S.C. § 102(b). On the trade dress issue, the Federal Circuit began by outlining the elements of a claim: To prevail on a claim for trade dress infringement, a plaintiff must prove three things: (1) that the trade dress of two products is confusingly similar; (2) that the features of the trade dress are primarily non-functional; and (3) that the trade dress has acquired secondary meaning. The district court found that Lanard could not provide sufficient evidence that the Lanard Chalk Pencil has acquired secondary meaning. Lanard relied exclusively on defendants’ copying and its own sales as evidence of secondary meaning, and the district court found that the evidence “woefully fails” to show secondary meaning. Lanard never presented evidence or argument that distinguished between end-users versus wholesalers and retail stores, nor evidence of efforts to promote its product through its sales force. The Federal Circuit found that on this record, the district court correctly granted summary judgment on Lanard’s claim for trade dress infringement.
In Spigen Korea Co. Ltd. v. Ultraproof, Inc., [2019-1435, 2019-1717] (April 17. 2020) the Federal Circuit reversed summary judgment of invalidity of three asserted design patents (U.S. Design Patent Nos. D771,607, D775,620, and D776,648 direct to a cell phone case) because the district court resolved a genuine dispute of material fact at summary judgment.
Figures 3–5 of the ’607 patent are illustrative of the claimed design:
The ’620 patent disclaims certain elements present in the ’607 patent. Figures 3–5 of the ’620 patent are illustrative of the claimed design:
Lastly, the ’648 patent disclaims most of the elements present in the ’607 and ’620 patents. Figures 3–5 of the ’648 patent are illustrative of the claimed design:
Ultraproof filed a motion for summary judgment of invalidity of the design patents, arguing that the designs were obvious as a matter of law in view of a primary reference, U.S. Design Patent No. D729,218 in view of U.S. Design Patent No. D772,209.
Spigen argued that there was a material factual dispute over whether the ’218 patent is a proper primary reference that precludes summary judgment, and the Federal Circuit agreed.
For design patents, the ultimate inquiry for obviousness is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved. This inquiry is a question of law based on underlying factual findings. One underlying factual issue is whether a prior art design qualifies as a “primary reference.”
A “primary reference” is a single reference that creates basically the same visual impression as the claimed design. To be basically the same, the designs at issue cannot have substantial differences in their overall visual appearances. If “major modifications” would be required to make a design look like the claimed design, then the two designs are not “basically the same.” “Slight differences” in design, however, do not necessarily preclude a “basically the same” finding.
Although a trial court judge may determine almost instinctively whether the two designs create basically the same visual impression, a trial court is not free to find facts at the summary judgment phase. Thus, if based on the evidence, a reasonable jury could find in favor of the non-moving party, a trial court must stay its hand and deny summary judgment of obviousness.
The Federal Circuit determined that a genuine dispute of material fact exists as to whether the ’218 patent is basically the same as the Spigen Design Patents and hence, a proper primary reference. The the Federal Circuit reversed the district court’s grant of summary judgment of invalidity and remand for further proceedings.
In Hafco Foundry and Machine Co., Inc. v. GMS Mine Repair and maintenance, Inc., Inc., [2018-1904] (March 16, 2020), the Federal Circuit affirmed the judgment of infringement of U.S. Patent No. D681,684 for a “Rock Dust Blower, ” affirmed the of GMS’ request for a new trial, and remanded for a final judgment on damages.
On appeal, GMS argued that the jury instructions incompletely and prejudicially abridged the Gorham test,” and failed to instruct that the hypothetical ordinary purchaser is to view the patented and accused designs in the context of the prior art.
GMS complained that the jury instructions defined the ordinary observer as “a person who buys and uses the product at issue.” However GMS failed to object to this language or any explanation of the purported flaw. GMS also argued the jury should have been instructed that small differences between the accused and the claimed design will avoid infringement, but GMS did not ask for such an instruction, and in any event the Federal Circuit said that it was not correct, noting that the designs do not have to be identical for design patent infringement to be found.
As to GMS’s second point, it argued that the jury should have been instructed to “familiarize yourself with each of the prior art designs that have been brought to your attention,” citing IPO Model Design Patent Jury Instructions. However GMS did not introduce any prior art. The Federal Circuit said that given that there was no prior art introduced at trial, no attempt by GMS to introduce the prior art, and no proposed jury instruction on this issue, the purported exclusion of this instruction cannot be error.
The Federal Circuit affirmed the finding of infringement and remanded for a determination of the damages.
In Campbell Soup Company v. Gamon Plus, Inc., [2018-2029, 2018-2030] (September 26, 2019) the Federal Circuit affirmed in part, vacated in part, and remanded, Board determinations that U.S. Patent Nos. D612,646 and D621,645 were nonobvious from the cited prior art.
The ‘645 and ‘646 patents are directed to ornamental design for a gravity feed dispenser display.
The Figures from U.S. Patent Nos. D612646 and D621645
The figures are identical except that the edges at the top and bottom of the cylindrical object lying on its side and the stops at the bottom of the dispenser are shown in broken lines in the ‘645 patent, and there is a small circle shown in broken lines near the middle of the label area.
Campbells filed IPR against both designs, arguing that the designs were obvious in view of (1) Linz in view of Samways, (2) Samways, or (3) Samways in view of Linz.
Linz (left) and Samways (right)
The Board held that Campbells did not establish unpatentability by a preponderance of the evidence because it found that neither Linz nor Samways was similar enough to the claimed designs to constitute a proper primary reference.
In the design patent context, the ultimate inquiry under section 103 is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved. To determine whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design, the fact finder must first find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design. To identify a primary reference, one must: (1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates “basically the same” visual impression. If a primary reference exists, related secondary references may be used to modify it.
The Board found that Linz was not a proper primary reference because it does not disclose any object, including the size, shape, and placement of the object in its display area and fails to disclose a cylindrical object below the label area in a similar spatial relationship to the claimed design. The Federal Circuit reversed for lack of substantial evidence support. Accepting the Board’s description of the claimed designs as correct, the Federal Circuit found that the ever-so-slight differences in design, in light of the overall similarities, do not properly lead to the result that Linz is not “a single reference that creates ‘basically the same’ visual impression” as the claimed designs.
The Board also found that Samways was not a proper primary reference. The Board found that significant modifications would first need to be made to Samways’ design, such as combining two distinct embodiments of the utility patent, which was “not a design in existence.” The Board found that considering the designs as a whole, the design characteristics of Samways are not basically the same as the claimed design. The Federal Circuit agreed, saying accepting the Board’s description of the claimed designs as correct, substantial evidence supports the Board’s finding that Samways is not a proper primary reference. The Federal Circuit noted numerous differences, and concluded that given these differences, substantial evidence supports the Board’s finding that Samways does not create basically the same visual impression as the claimed designs.
The Federal Circuit remanded the case to the Board to consider obviousness with Linz as a primary reference.
In Curver Luxembourg, SARL v. Home Expressions Inc., [2018-2214] (September 12, 2019), the Federal Circuit affirmed the dismissal of an action alleging Home Expressions baskets infringed U.S. Patent No. D677946 on a Pattern For a Chair.
The application that resulted in the ‘946 patent was filed as a “design for a Furniture Part,” although none of the drawings illustrate a chair, any furniture, or any furniture part. The USPTO objected to the title because PTO regulations require that the title designate a “particular article,” and the use of “Part” was too vague to constitute an article of manufacture. The Examiner suggested that the title be amended to “Pattern for a Chair,” and the applicant complied.
U.S. Patent No. D677946, Fig. 1
The district court construed the scope of the ’946 patent to be limited to the design pattern illustrated in the patent figures as applied to a chair, explaining that “[t]he scope of a design patent is limited to the ‘article of manufacture’—i.e., the product—listed in the patent,” and granted Home expressions motion to dismiss.
The Federal Circuit noted that Curver’s appeal was essentially a request for a patent on a surface ornamentation per se. The Federal Circuit said that Curved acknowledged that the law has never sanctioned granting a design patent for a surface ornamentation in the abstract such that the patent’s scope encompasses every possible article of manufacture to which the surface ornamentation is applied, and the Federal Circuit declined to construe the scope of a design patent so broadly merely because the referenced article of manufacture appears only in the claim language, rather than the figures.
The Federal Circuit, pointing out that it was a case of first impression, addressed the question whether claim language specifying an article of manufacture can limit the scope of a design patent, even if that article of manufacture is not actually illustrated in the Figures. Given that long-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se, the Federal Circuit held that claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.
U.S. Patent No. D824219 issued on July 31, 2018 on a “Coaster State Bottle Opener.” This patent is interesting because it has 52 embodiments that are depicted in 260 Figures, featuring every state on its own coaster/bottle opener.
The multiple embodiments in U.S. Patent No. D824219 allow you to assemble a lovely coast collection featuring Harness, Dickey locations!
Applicants are of course entitled to present as many embodiments as they wish in a design patent application. MPEP 1504.05 states that “[m]ore than one embodiment of a design may be protected by a single claim. However, such embodiments may be presented only if they involve a single inventive concept according to the obviousness-type double patenting practice for designs.” If the embodiments do not involve a single inventive concept, the the Office will issue a restriction requirement, which can present a risk for the applicant, and discussed below. The MPEP sets out a two part test for determining whether embodiments involve a single inventive concept:
(A) the embodiments must have overall appearances with basically the same design characteristics; and (B) the differences between the embodiments must be insufficient to patentably distinguish one design from the other.
MPEP 1504.05
The presentation of multiple embodiments has the effect of broadening the scope of the claim, because the single design patent claim only covers the elements common to all of the embodiments. This is great from an infringement standpoint, but it also makes the design patent more vulnerable to a validity attack.
As mentioned above, restriction requirements can present difficulties for design patent applicants. If the applicant does not file a divisional application for each restricted embodiment, the applicant could be dedicating the non-pursued embodiments to the the public. This was the case in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, (Fed. Cir. 2014), where the Federal Circuit held that when subject matter is surrendered during prosecution of a design patent (such as by acceding to a restriction requirement), prosecution history estoppel prevents the patentee from “recapturing in an infringement action the very subject matter surrendered as a condition of receiving the patent.” e claimed invention.
In Pacific Coast Marine, during prosecution of the patent in suit (D689782) the Examiner identified five separate embodiments, but the applicant protected only two, leaving the other three embodiments unprotected.
Just because one can include multiple embodiments in a design application does not mean it is always a good idea. Thought should be given to whether the same protection can be achieved through a single embodiment with unimportant details shown in dashed lines (and thus excluded from the scope of the claims), and/or whether multiple applications would would provide better protection (albeit at a higher cost). Multiple embodiments can complicate both validity and infringement determinations.
