Four Finger Glove Design Patent NonInfringement Suit

Contraband Sports LLC sells workout products, including its gloves for use in weight lifting. Fit Four LLC sent a notice of intellectual property rights violation to Amazon alleging the Contraband’s gloves infringed Fit Four’s Design patent D652,607 (the ‘607 patent). This resulted in Amazon taking down Contraband’s gloves from Amazon, “during the busy holiday season and less than one week before Christmas.”

Contraband filed suit for declaratory judgement that its gloves do not infringe the ‘607 patent. The complaint asserted the following differences, among others, between its glove and the ‘607 patent:

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The ‘607 patent provides mostly plain surfaces on the front and back of the glove. Contraband’s gloves includes a number of design features that are absent from the ‘607 patent.

The ordinary observer test is applied in design cases to determine whether the accused design is substantially similar to the patented design and therefore infringes. The test provides: “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 first one patented is infringed by the other.” International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009). Also, “‘when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.”

A quick review of the patents cited in the ‘607 patent reveals the following prior art US Patent 1,954,262 directed to a four finger glove for golf:

US1954262

This golf glove has a distinct angled bottom edge that nether the ‘607 patent nor the Contraband glove have.

The hook and loop (VELCRO) strap, shown above, stands out in comparing the ‘607 patent and the Contraband glove. It is probably one of the biggest things standing in the way of a conclusion that Contraband’s glove and the ‘607 patent are substantially the same.

Contraband likely wants it’s products back on Amazon. It might file a motion for preliminary injunction to get a early ruling for that purpose. Nevertheless, there’s almost no time to get relief before Christmas for holiday sales purposes. Therefore, it may need to rely on its pursuit of damages in this case if it ultimately succeeds in showing non-infringement.

Citation: Contraband Sports LLC v. Fit Four LLC, No. 1-17-cv-24615 (S.D.Fl 2017).

Four Factor Test for Determining the Article for Total Profit Damages in Apple v. Samsung

USD0618677_fig1In a 2016 decision in Samsung v. Apple, the Supreme Court determined that the relevant “article of manufacture” for calculating total profits damages for design patent infringement could be either (1) the product (e.g. the Samsung phone) sold to a customer or (2) a component of that product.

Previously, the “article of manufacture” for calculating total profits damages for design patent infringement was the entire product sold to a customer. The profits to the entire product are usually likely to be greater than profits to a component of the entire product.

The case was sent back to the trial court and a new trial was ordered on damages. In October 2017, the trial court ruled that a four factor test would be used to determine what is the article of manufacture for the purposes of damages under 35 USC 289. The four factors are:

  1. The scope of the design claimed in the plaintiff’s patent, including the drawing and written description;
  2. The relative prominence of the design within the product as a whole;
  3. Whether the design is conceptually distinct from the product as a whole; and
  4. The physical relationship between the patented design and the rest of the product, including whether the design pertains to a component that a user or seller can physically separate from the product as a whole, and whether the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately.

Under this test, it is possible that a jury could conclude that the article of manufacture is the entire Samsung phone and not just a component of it. If so, the result could be largely the same as before the Supreme Court decision.

Both Apple and Samsung at certain times in the case supported the four factor test. This means that each saw or sees a way to win under the test. If a jury determines the article is the whole infringing phone, Apple is a winner. If a jury determines the article is less than the whole phone, Samsung may succeed in reducing the damages awarded.

There are three design patents at issue: D593,087 is directed to primarily the front face of the iPhone and the beveled edge, D618,677 is primarily directed to the black “infinity pool” face of the iPhone, and D604,305 is directed to the home screen user interface. Representative figures from the each patent, respectively, is shown below.

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Even if Apple can’t show, with respect to each patent, that the “article” is the whole infringing phone, these three patents cover the home screen user interface and the exterior of the device, except for the back. These features are arguably a large part of the visual appeal of the device. But, these patents do not cover the side profile of the device, or as mentioned, the back. We will see how close Apple gets to the original damage award of $399 million, which was the entire profit Samsung made from its sale of the infringing smartphones.

Citation: Apple Inc. v. Samsung Electronics Co., no. 11-CV-01846, 2017 U.S. Dist. LEXIS 177199; 2017 WL 4776443 (N.D.Cal. Oct. 22, 2017).

Total Profit Damages on Entire Product or Component for Design Patent Infringement

USD0593087_Fig1In 2007, Apple released its first generation iPhone. After Apple released its iPhone, Samsung released as series of smartphones “that resembled the iPhone.” In 2011, Apples sued Samsung alleging various infringement claims, including that Samsung’s smartphones infringed Apple’s D593,087, D618,677, and D604,305 design patents. A jury awarded Apple $399 million in damages for design patent infringement, the entire profit Samsung made from its sale of the infringing smartphones.

Samsung appealed arguing “that the profits awarded should have been limited to the infringing ‘article of manufacture’—for example, the screen or case of the smartphone—’not the entire infringing product’—the smartphone.” The court of appeals rejected that argument reasoning that “’limit[ing] the dam- ages’ award was not required because the ‘innards of Samsung’s smartphones were not sold separately from their shells as distinct articles of manufacture to ordinary purchasers.'”

The applicable statute at 35 USC 289 provides that a design patent infringer “…shall be liable to the owner to the extent of his total profit, but not less than $250….”

But the Supreme Court reversed holding that in the case of a multi-component product, the relevant “article of manufacture” for calculating total profits damages could be either (1) the product sold to a customer or (2) a component of that product, whether sold separately or not.

The court did not provide a test for determining whether, in a given case, “article of manufacture” for calculating profits should be the product sold to a customer or a component of that product.

The profits to the entire product will be greater than profits to a component of the entire product. Therefore, this decision has the potential to reduce the profits damages available to design patent holders and therefore to reduce the value of design patents.

Case citation: Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (2016).

Design Patent Drawings: Surface Shading

DesignPatentCokeBottleDesign patents seek to protect the appearance of an article of manufacture, such as a product or a portion of a product. Therefore, design patents consist mostly of drawings of the invention with a small amount of text. The drawings mostly define the scope of protection that will be provided under the design patent. Therefore, the details of the drawings for design patents are very important.

Surface shading in the drawings may be important to determining whether the patent design covers a particular third party product (e.g. an alleged infringer). The patent rules provide regarding design patent drawings, “Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented.” MPEP 1503.02. The rules further provide, “Lack of appropriate surface shading in the drawing as filed may render the design nonenabling and indefinite ….” If the patent application is deemed nonenabling or indefinite a patent may not be granted by the patent office or the resulting patent may be invalid. Therefore, drawings showing only perimeter boundaries with a black line may not be sufficient. The drawings may need to show surface shading with the appropriate shading techniques accepted by the office.

There are two principal type of shading: line shading and stippling (the use of dots). The rules provide “Spaced lines for shading are preferred.” 37 C.F.R. 1.84(m).  The rules continue, “These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings.”

U.S. Patent D48,160 is a design patent on a classic bottle of The Coca Cola Company, which shows the use of line shading. Closely spaced thin vertical shading lines are provided adjacent the valley of each of the vertical grooves to show that the surface curves toward each valley. Closely spaced thin horizontal lines are provided in three horizontal locations at the top of the bottle to show vertical surface curves at horizontal locations near the top opening.

DesignPatentLineShadingU.S. Patent D526,178 provides another example of shading in a design patent. Line shading is predominately used. As the electric drill illustrated has many different curved surfaces, many shading lines are used to show those curved surfaces.

DesignPatentStipplingU.S. Patent D190,563 shows the use of stippling (dots) as shading in a design patent for a car. Shading is providing by varying the density/spacing of the dots. You can see the dots are more closely spaced to show the horizontal fins above each wheel. The dots are more dispersed in other areas, such as the mid-door areas.

As the details of the drawings are very important for design patents, care should be taken in creating the drawings. The use of a professional patent drawings draftsperson is often appropriate to ensure high quality drawings.

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

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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.