Design Patent on Open Ended Wrench, Functional or Ornamental?

The USPTO recently issued US Design Patent D859,108 covering a wrench, which is shown below.

Every part of this wrench is shown in broken lines except the U-shaped mouth working portion that is for engaging with another part, such as a nut, bold head, or the like. Therefore, the U-shaped part, shown in solid lines, is the only claimed part of the wrench.

I wonder whether the curvy design of the U-shaped part is functional. Design patents are to be directed to ornamental designs. So, if a design patent is directed to a design that is primarily functional, the patent can be invalid.

However, the standard for invalidating a design patent as directed to primarily functional matter is stringent. See Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015). The Federal Circuit Court of Appeals has said that “[w]hen there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.” It also said, “[I]f other designs could produce the same or similar functional capabilities, the design of the article in question is likely ornamental, not functional.”

Here, I don’t know whether the curvy design of the U-shaped part imparts a functional benefit, or, if so, whether other designs could also achieve that function. However, it is interesting that the only claimed portion of this wrench is the working mouth portion that is for engaging with another part, such as a nut, bolt head, or the like.

How Limiting is a Specific Date and Time in a User Interface claimed in a Design Patent?

Apple recently was granted US Design Patent D861,014 for an electronic device with graphical user interface. The patent is directed to the user interface for a smart watch. Below is figure 1.

Apple kept the time and date in solid lines claiming them rather than making the time and date in broken lines. Providing the date and time in broken lines would have made those elements unclaimed and would not have limited the claimed design.

However, including the date and time might not be much of a limitation in terms of the actual date and time displayed. First, any competitor device with the same vertical stripe pattern and time in the upper right location would show 10:09 twice a day. The old adage applies that a broken clock is correct twice a day. Further, it is likely that Wednesday will fall on the 23rd of the month every now and then.

Presenting the date and time in solid lines does limit the claimed design here. But maybe not greatly in terms of the actual time of 10:09 or the date of Wednesday the 23rd. Instead, the limitation probably is more in terms of the location and presentation of the date and time.

The original application that resulted in the above patent contained drawings showing the date and time in broken lines as well as solid lines. But, Apple amended the application to focus on the non-broken line version. There is a continuation patent application filed where Apple might be pursing the broken line version, which is shown below. If Apple obtains a patent on the broken line version below, it will have hedged its risk that the solid line version is too limiting.

How to Broaden Design Patent Protection with Broken Lines: Apple v Samsung

ApplePatentD593087_SamsungGalaxyS4G

The Samsung Galaxy S 4G smartphone on the right has a different back shape and lacks a circular home button on the front as compared to the iPhone in Figures 19 and 24 of U.S. Patent No. D593087¬†(“the ‘087 patent”), shown on the left. But a jury determined that the Galaxy infringed the ‘087 patent in the case of Apple v. Samsung, No. 200-cv-01846 (N.D. Cal. 2011). Did the jury ignore those different elements of the Galaxy phone?

Yes. And they were right to ignore them.

Apple drafted the ‘087 patent in a way that requires that the differences in the back shape and the home button be ignored. Apple did that by providing those features in broken lines.

The solid lines indicate the part of design of the iPhone that Apple claimed, which include rounded rectangular bezel and the phone speaker opening on the front face.

Design Patent Infringement

If Apple would have shown all sides and all features of the iPhone in solid lines in the ‘087 patent, then it is possible that the jury would have determined that the Galaxy did not infringe the ‘087 patent.

The ordinary observer test is used to determine design patent infringement. As explained in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), the ordinary observer test provides:

“[I]f, 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 first one patented is infringed by the other.”

If Apple provided all sides and all features of the iPhone in solid lines in the ‘087 patent, could the jury have found the differences in the Galaxy phone, including the back shape and the lack of a home button, were enough to prevent the ordinary observer being deceived to purchase the Galaxy supposing it was the iPhone? Maybe so. Even if not, it would have made Apple’s case harder to prove.

Determining Important Features

Before drafting design patent drawings, first determine which features are important and which features are not important or are less important.

In figure 19 of the ‘087 patent, Apple determined the unique and important features to protect were the rounded rectangular bezel and the phone speaker opening on the front face. Apple provided the other features, the back/side shape and the home button, in broken lines.

It is common for the back or bottom of a product to be less important, especially if the back or bottom is not regularly seen by customers or users. Less important or unimportant features can be shown in broken lines so that those features do not limit your design patent rights.

The strategic use of broken lines for unimportant or less important features in a design patent  can allow you to focus the patent protection on the important portions of your product. By focusing on those important portions, you can achieve broader design patent protection.

Broader design patent protection will protect against competitors introducing designs that copy your important features but modify unimportant features to avoid your design patent. In the Apple case, Samsung was unable to avoid the ‘087 patent by making changes to the shape of the back, while providing a similar front bezel and flat face.