Tag: design patent

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Transparency and Design Patents; Design Patent with Computer Generated Images Claims Only Opaque Design

The way that a design is presented in a design patent is critical. Design patent drawings are often line drawings. But photographs are also allowed. And some patents use computer generated images.

Yet, while photographs and computer generated images may provide more details than line drawings, they are likely to be more limiting. The more details in the design drawings the more possible differences a competitor could develop. Details in a design patent are a double edged sword, more details provide increased options for distinguishing prior art, but may result in more narrow protection as shown in the case below.

Think Green Ltd. sued Medela AG asserting that Medela’s breast pump infringed its design patent US D808,006 (the ‘006 Patent). Below is figure 9 (first/left) from the ‘006 patent and Medela’s pump (second/right).

Medela’s pump is transparent. The images of the ‘006 patent are computer generated images. Think Green argued that the ‘006 patent covered transparent objects. The court disagrees.

According to MPEP rules, surface shading lines are used to “indicate “character and contour,” including “to distinguish between any open and solid areas of the article.” On the other hand, the court notes that other “courts have held that when a patent fails to specify a limitation, in other words, when it is blank and does not include surface shading, the patentee is entitled to the broadest reasonable construction.” For example, in an older case from the 6th Circuit, that court found a blank surface without oblique lines could claim a transparent, translucent, or opaque surface, or both. Transmatic, Inc. v. Gulton Indus., Inc., 601 F.2d 904, 912-13 (6th Cir. 1979).

The court in the Think Green case concluded “an inventor intending to claim a generically opaque surface, and not any particular material type, would use a line drawing with a blank surface, free of anything but contour lines, thereby claiming both an opaque and transparent surface.” Therefore, the court found the ‘006 Patent computer generated images “must be interpreted to claim an opaque object to the exclusion of translucent or transparent objects.”

The court then found that Medela’s pump was not substantially the same as the design of the ‘006 Patent and did not infringe. The court said:

“Even if Medela’s product were exactly the same as Think Green’s design in all other aspects, the Court finds that an ordinary observer would not find the translucent object to be substantially the same as the opaque object. Opaque and translucent objects are categorically different such that they are “plainly dissimilar” and could not be confused by an ordinary observer. … Indeed, whether an object is opaque or translucent is one of the most obvious and prominent characteristics of any object.” Think Green Ltd. v. Medela AG, No. 21 C 5445, 2022 U.S. Dist. LEXIS 184040 (N.D. Ill. Oct. 7, 2022)

Now, compare the drawings of the ‘006 patent to the following drawings from two patents owned by Lego A/S.

US Patent D951366
US. Patent D951365

The first drawing (left) from US Patent D951366 (‘366 patent) shows a toy building element presented in a traditional black and white line drawing. The second drawing (right) from US Patent D951365 (‘365 patent) is a photograph, showing the toy building element is transparent or at least translucent.

The ‘365 patent clearly covers a transparent or translucent toy building element, but probably does not cover an opaque product under the reasoning in the Think Green case.

But does the ‘366 patent cover transparent or translucent products? The reasoning in the Transmatic, Inc. and Think Green cases indicates it does.

Yet, the MPEP provides that “oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror.” MPEP 1503.02(II).

What is oblique line shading? The following is an example of oblique line shading for black and white line drawings showing transparent surfaces, from the USPTO Design Patent Application Guide:

.

Does the failure to use oblique line shading in line drawings limit the claimed design to opaque surfaces? A number of district courts have said no and followed Transmatic.

One court said: “the relevant section [1503.02(II)] of the MPEP only specifies that an inventor wishing to limit a particular surface to a transparent, translucent, or reflective material must indicate the surface through the use of oblique lines. It does not state that failure to include oblique lines necessarily excludes the use of a transparent surface.” Apple, Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK, 2012 U.S. Dist. LEXIS 105125, at *24-25 (N.D. Cal. July 27, 2012). Other district courts have agreed in Water Tech., LLC v. Kokido Dev. Ltd., No. 4:17-cv-01906-AGF, 2019 U.S. Dist. LEXIS 42420, at *42-44 (E.D. Mo. Mar. 15, 2019) and Lifted Ltd., Ltd. Liab. Co. v. Novelty Inc., Civil Action No. 16-cv-03135-PAB-GPG, 2020 U.S. Dist. LEXIS 92102, at *19-20 (D. Colo. May 27, 2020).

The drawings of design patent D556396 in the Water Tech case that were construed to encompass both opaque and transparent surfaces includes:

Why would Lego file for the ‘356 patent with photos of the transparent product if the line drawing version in the ‘366 patent is sufficient to cover transparent and opaque surfaces according to the cases above? There are at least a few reasons. First, if the prior art invalidates the broader line drawing version of the ‘366 patent, possibly the ‘365 patent would survive on the basis of the specifically claimed transparency (there is some uncertainty on this issue as well but see In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001)). Second, it appears the Federal Circuit has not ruled directly on whether line drawings cover transparent and opaque surfaces. Therefore, if the Federal Circuit would decide line drawings do not cover transparent surfaces or the law would otherwise change in this direction, Lego would be covered by the patent specifically showing transparency. Third, possibly it makes it easier marginally to succeed on a patent infringement case because the transparency in the design patent drawings makes them look more like the accused transparent product. In theory this last aspect should not matter if a judge instructs that the design patent covers transparent and opaque surfaces. Yet, it nevertheless may be marginally easier.

Appropriate line drawings provide a better chance of covering transparent surfaces as compared to photos or computer images of products with opaque surfaces. Yet, if transparent surfaces are important to the design, they can be specifically indicated in the drawings by the use of oblique line shading and accompanying text description or a photo showing a transparent product such as in Lego’s ‘365 patent above.

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Design Patent Infringement Claim Over Skinny Razor Fails

Sharidan Stiles was selling her Stiles Razor, a disposable razor with a narrow blade, through Walmart. But the sales of her product were allegedly not meeting Walmart’s expectations. Walmart stopped selling Stiles Razor and began selling another narrow blade razor, the “Micro Razor,” provided by American International Industries. Silts sued Walmart and American for design patent infringement, among other claims.

Below are figures from the U.S. Design Patent D542,468 and photos of the accused Miro Razor.

The commonalities of a narrowed and angled head, a elongated handle, and a gripping surface, are factored out as functional. That leaves the ornamental aspects, about which the court says differ on the whole:

“First, the grip: in the American design, the grip is much wider than the handle, but in only one dimension, and the bulge has a diamond-like shape. In the Stiles design, by contrast, the grip is a cylinder with a constant radius, as described above. The American grip is also contoured and textured, whereas the Stiles grip is angular and smooth. Second, the end of the handle: the American design is rounded; the Stiles design is flat. Overall, these and other features give the American razor a flowing, contoured look and the Stiles Razor an angular, minimalistic look.”

Therefore, the court found that the Micro Razor did not infringe the patent.

Case: Stiles v. Walmart, Inc., No. 2:14-cv-02234-DAD-DMC, 2022 U.S. Dist. LEXIS 203768 (E.D. Cal. Nov. 7, 2022)

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Is the Bottom or Back of Your Design Important?

When filing a design patent application, you should consider whether the design has unimportant features or sides. Then the design patent application can be prepared to take this into account.

For example, Super-Sparkly Safety Stuff, LLC sued Skyline USA, Inc. alleging it of infringing Design Patent D731,172S (‘172 Patent).

The complaint shows the following image of Skyline’s alleged pepper spray infringing product. The product does not have rhinestones on the bottom as compared to the cylindrical side.

However the design of the ‘172 Patent has rhinestones on the bottom, as shown in figure 3.

The district court granted summary judgement of non-infringement finding that the Skyline product did not infringe the ‘172 patent.

The court said that “the accused product has no rhinestones on the canister bottom … This difference is significant, particularly given the relatively simple and limited elements of the product design, and would be obvious to an ordinary observer.”

You might think that the bottom of the product is not that important and differences in the bottom should not weight heavily when comparing an alleged infringing product to a design patent. But this case shows that even the bottom of a product might be important in a design patent case.

If the bottom or the back of your design is not important, then consider whether it should not be claimed by presenting it in broken lines.

In this case, it may be that the bottom is important because the bottom is where the key ring attaches on the pepper spray product. Therefore, the bottom could be in view to the user often in normal use.

Citation: Super-Sparkly Safety Stuff, LCC v. Skyline USA, Inc., 3:18-cv-00587-N (N.D. Tex 2020). Super-Sparkly appealed and the appeal is pending.

Hat tip to Design Law.

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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.

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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.

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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:

Contraband_Complaint1

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).

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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.

USD0593087_Fig1USD0618677_fig1

USD0604305_Fig1

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).

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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).

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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.

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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.