Apple Inc. faces a ban on imports of some older devices, including the iPhone 4, iPhone 3GS, iPhone 3, iPad 3G and iPad 2 3G made for ATT Inc. Carani speaks with Jon Erlichman on Bloomberg Television’s “Bloomberg West.” (Source: Bloomberg)
CLE Description: In the world-wide battle royale between consumer tech titans Apple and Samsung, design rights have taken center stage. The lion share of the $1.05B jury award in the U.S. case relates to Samsung’s infringement of design patents. In the wake of this blockbuster verdict, companies and practitioners the world over are taking a second, hard look at design rights. In this CLE, leading design patent attorney Christopher V. Carani of McAndrews, Held & Malloy, Ltd. will discuss (1) cutting edge design prosecution techniques to protect not only the industrial design, but also the graphic user interfaces and icons, and (2) various design-specific litigation issues, including design patent infringement, functionality, claim construction, obviousness, anticipation and remedies. Further, the presentation will include a discussion of recent design patent cases, including the U.S. Court of Appeals for the Federal Circuit’s opinion in In Re Owens and the USPTO’s first grant of an inter partes review of a design patent in Munchkin v. Luv n’ Care. Lastly, the presentation will include suggested best practices for filing for design protection under the Hague Agreement.
McAndrews, Held & Malloy Shareholder Christopher V. Carani was a featured speaker at the American Intellectual Property Law Association (AIPLA) 2013 Spring Meeting on May 2, 2013, in Seattle. At the event, Chris presented a comparative and historical analysis of the available remedies for design patents, trademarks and copyrights, and their application in the landmark case Apple v. Samsung. He focused on a series of U.S. Supreme Court decisions from the late 1800′s regarding carpet designs (“The Carpet Wars”) that culminated in the Design Patent Act of 1887. See Dobson v. Hartford (1885); Dobson v. Bigelow (1885); Dobson v. Dornan (1886). A copy of his slide deck can be viewed here. Remedies for Design Infringement (AIPLA Spring Meeting 2013) (Carani) (FINAL) (4 panel)
AIPLA’s Spring Meeting is an annual, three-day event that provides attendees with in-depth educational tracks on the latest developments in intellectual property law. A copy of the program is found here: Program 2013 AIPLA Spring. For the educational track focused on design law, Carani shared the stage with other notable design patent experts:
Tracy-Gene G. Durkin, Sterne Kessler Goldstein & Fox, PLLC, Washington, DC: Protecting the Look of Smartphone Apps— Design Patent, Trademark and Copyright Protection for Icons and GUIs
Richard Stockton, Banner & Witcoff, Ltd., Chicago, IL: Functionality in the Design World—The Doctrine of Functionality and Its Implications in Design Protection
Christopher V. Carani, McAndrews Held & Malloy, Ltd., Chicago, IL; Design Law Infringement Remedies: When Sorry Is Not Enough
Lance D. Reich, Lee & Hayes, PLLC, Seattle, WA: Design Protection on a Global Scale—Now and After the Patent Law Treaties
Francois Guay, Smart & Biggar/Fetherstonhaugh, Ottawa, Ontario, Canada: Design Protection inCanada—The Double-Wall Perspective
McAndrews, Held & Malloy Shareholder Christopher V. Caraniwill present at the U.S. Patent & Trademark Office’s (USPTO) Design Day 2013: Designs in the New Digital Age, on April 22, 2013. Chris, along with co-presenters Charles L. Mauro (Mauro New Media) and Robert S. Katz (Banner & Witcoff), will speak before the USPTO’s patent examiners and discuss current design patent jurisprudence along with issues on how errors in prosecution can ultimately impact enforcement efforts.
At Design Day 2013, Chris will join other attorneys, judges, examiners and industrial designers from across the country to exchange ideas and educate each other on important issues impacting the design patent practice. Topics include:
Design Day is open to all and there is no fee to attend. To register, visit: http://2013designday.eventbrite.com/#.
McAndrews, Held & Malloy Shareholder Christopher V. Carani will present at the Eighth Annual JTIP Symposium, hosted by the Northwestern Journal of Technology and Intellectual Property (JTIP), in conjunction with the Searle Center on Law, Regulation and Economic Growth. Carani will participate in the session titled, “FRAND: What constitutes reasonable patent licensing terms?” on March 8, 2013, from 12:45-2:30 pm.
Specifically, Carani will present on the implications of the FTC’s decision and consent order in relation to its investigation of Google related to Standard Essential Patents and FRAND licensing. Other speakers featured on the distinguished panel include:
• Latonia Gordon, Director, Standards Policy, Microsoft
• Alden Abbott, Director, Global Patent Law & Competition Strategy, Blackberry
• Mark Snyder, Corporate Litigation, Qualcomm
• Jorge L. Contreras, American University College of Law, Contreras Legal Strategy LLC
• Jason Sheasby, Irell & Manella
Other topics at the Eighth Annual JTIP Symposium include:
• Net Neutrality: Government Overreach or the Key to Innovation?
• The Past, Present and Future of Social Media
Each year, the JTIP Symposium brings together students, academics and practitioners from across the country to discuss legal topics at the forefront of technology and intellectual property. For more information and to register, click here.
The full program is available here. 2013 Symposium Program
Date: April 5-6, 2013
Location: Stanford Law School. The Law School is located at 559 Nathan Abbott Way, Stanford CA 94305.
“Stanford Law School will host a major conference on design patents April 5-6, 2013. Long neglected in practice and academic scholarship,design patents have exploded in importance as a result both of recent changes in the law and high-profile cases like Apple v. Samsung. Drawing on the experience of lawyers, in-house counsel and academics, our conference will explore both practical and policy ramifications of these developments. Along with the public conference, on April 5, Stanford will host a one-day academic symposium with papers on design patents from the leading scholars in the world on these issues.”
Sarah Burstein, University of Oklahoma
Christopher V. Carani, McAndrews Held & Malloy, Ltd.
Dennis Crouch, University of Missouri
Alan Morgan Datri, WIPO
Brian Hanlon, USPTO
Laura Heymann, William & Mary Law School
James Juo, Fulwider Patton
Robert Katz, Banner & Witcoff
Mark Lemley, Stanford Law School
Jaime Lemons, Nike
Katie Maksym, Nike
Michael Meehan, Google Inc.
Mark McKenna, Notre Dame Law School
Tom Moga, Shook Hardy & Bacon
John Pratt, Kilpatrick Townsend
Michael Risch, Villanova
Perry Saidman, Saidman Design Law
Michael Risch, Villanova Law School
Program for April 5th Design Patents in the Modern World Public Conference: Link
Program for April 6th Design Patents Academic Conference: Link
The conference is co-sponsored by the Stanford Program in Law, Science, & Technology, Google, Samsung Electronics, and Nike.
I will participate in a panel discussion entitled “A Deep Dive Into Design Patent Law” at the Giles S. Rich American Inn of Court on February 13, 2013. The other panelist will be David Gerk from the USPTO’s Office of Policy & External Affairs. The program will take place at the U.S. Court of Appeals for the Federal Circuit in Washington, DC. For more information please see the Giles S. Rich American Inn of Court website.
Webinar: A U.S. Practitioner’s Guide to European Union Design Law
Date: Thursday, February 7, 2013, 1:00 PM-2:30 PM Eastern
Duration: 90 minutes
Link for registration: http://apps.americanbar.org/cle/programs/t13eud1.html?sc_cid=CET3EUD-B
This webinar will provide a grounding discussion regarding EU design law and some of the differences with U.S. design patent law. The session will cover what subject matter is protectable, the validity tests of “novelty” and “individual character,” the exclusion for “solely dictated by technical function,” registered (25 years) and unregistered (3 years) Community design rights, and enforcement. The webinar will also touch on some of the similarities and differences with the Community Trade Mark regime.
In re Owens (2012-1261) is currently pending before the Federal Circuit Court of Appeals. The case presents a matter of first impression regarding continuation practice for design patents, and specifically the ability of applicants to use unclaimed boundary lines. Oral argument was held on January 9, 2013. Here is a link to an MP3 of the oral argument. Oral Argument for 2012-1261
The facts of the case can be boiled down to the following illustration:
The image on the left is from the parent application, while the image on the right is from the child. The child sought to claim priority back to the parent. The BPAI held that the child was not entitled to priority 35 U.S.C. § 120 because the child was not fully described in the parent and thus did not satisfy the written description requirement of 35 U.S.C. § 112(a). More specifically, the BPAI held that the applicant was not “in possession” of the design claimed in the child at the time of filing the parent. With the priority claim being denied and the parent having been published (as patent D531515) more than one year prior to the filing date of the child, the parent served as a block to patentability of the child. Thus, the issue of whether priority was appropriate was case determinative.
The key to the case resides in the dot-dash unclaimed boundary line. As explained below, if the boundary line is properly interpreted, Owens should prevail. If, however, the boundary line is somehow considered as being part of the claimed design (e.g. a claimed horizontal line), Owens will lose because the horizontal line was not described in the parent.
It is well-settled that during prosecution (including continuation practice) solid lines can be converted to dashed lines and vice-versa. (As show in the above illustration, several of the solid lines in the parent were converted to dotted lines in the child.) In utility patent speak, it is helpful to think of the universe of dashed lines and solid lines in design application as the “specification.” The design applicant can choose to claim (in solid lines) anything that is described and disclosed in that universe of subject matter in the “specification.” But this case is not about dashed lines or solid lines, rather it is about boundary lines. Typically, boundary lines are denoted with “dot-dash” lines. Below is a visual illustation of dashed lines vs. dot-dash lines.
In the child in Owens, there was a horizontal dot-dash line that was added to denote the lower limit of the claimed design on the front face of the bottle. Significantly, the boundary line is not claimed. Indeed, if the applicant attempted to claim the lower edge, it would surely constitute the introduction of new matter; no such line existed in the parent. Instead, Applicant merely has added an unclaimed boundary, denoting that the claim is everything north of the boundary line, but not including the boundary line. Significantly, every claimed curve, angle and surface of the child was described and disclosed in the parent.
A few examples, further highlight the issue in the case. The claimed portions are highlighted in blue.
EXAMPLE 1: In the first example, we see standard design patent continuation practice – conversion of solid lines (in the parent) to dashed lines (in the child). (This example does not implicate dot-dash boundary lines.) The Federal Circuit has made clear that this type of conversion does not offend 35 U.S.C. § 112(a). See Vas‐Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
EXAMPLE 2:The next example also shows accepted USPTO practice. See MPEP 1503.02 Here, a boundary line (the dot-dashline) has connected the points on the sides of the diamond shape). The net result is a claim scope covering designs that incorporate the top half of the diamond, irrespective of a design’s lower resolution. The lower resolution is not claimed. In utility patent speak this is analagous to claim language requiring “at least the top half of the diamond.” It makes sense that this is permitted because every angle and surface that is claimed in the child is described and disclosed in the parent. Of course, the remaining claimed portion must satisfy the other staturory requirements for patentability. (i.e. novely, non-obviousness, ornamentality, etc.)
EXAMPLE 3: The last example fairly represents the facts of In re Owens. Here, a dot dashed unclaimed boundary line has been added, not at a point spanning the side points of the diamond (a location permitted by the USPTO), but rather at a position above the midpoint. In the eyes of the USPTO, this slight push to the north violates 35 U.S.C. § 112(a).
It seems inconsistent to hold that the child in Examples 1 and 2 are supported by their respective parents, but that the child in Example 3 is not. Again, every surface and every angle in the claimed child of Example 3 was disclosed and described in the parent of Example 3. The applicant is not claiming the lower border; the claim is not directed at a triangle shape. Rather, the lower resolution of the claimed design is not specified. As noted above, the lower resolution need not be a straight line; it could be wavy; it could be a semi-circle. Again, in utility patent speak this is analagous to claim language requiring “at least the top tip of the diamond.”
Back to In re Owens
At oral argument, the Panel seemed hung up on the idea that the Applicant was somehow claiming a “trapezoid shape” in the child, and that because this trapezoid shape was not present in the parent, the written desciption requirement is not satisfied. The problem with this reasoning is that the applicant is NOT claiming a trapezoid shape. (Query: The PTO does not include the shape created by boundary lines in its searches. Rather, they are properly focused on the claimed portion. Think GUI or icon - searching is not conducted on the shape of the screen’s unclaimed boundary line.) Thus, there was not “new matter” added to the claim. Proper interpretation of the claim, and the boundary line, leaves no portion in the child that wasn’t disclosed and described in the parent. Simply put, the lower resolution of the front panel of the bottle was not claimed and thus there need not be support for such lower boundary in the parent. Again, the problem with the BPAI’s conclusion stems from its misinterpretation of the meaning of an unclaimed boundary line. Owens was not claiming a a trapezoid shape on the front face of the bottle.
In conclusion, every line, surface and curve claimed in the child in Owens is fully described and disclosed in its parent. Stated another way, the Applicant was in possession of every line, surface and curve claimed in the child when the parent was filed. Thus, having satisfied the requirements of 35 U.S.C. § 112(a), the child should be entitled to priority 35 U.S.C. § 120. We shall see if the Panel agrees. Stay tuned.
Excellent briefs in the case were submitted by leading design patent practitioners Perry Saidman and Tracy-Gene Durkin. Perry Saidman filed briefs on behalf Appellant Owens. Appellant’s Opening Brief, Appellant’s Reply Brief. Tracy-Gene Durkin, and her firm, filed an amicus brief on behalf of Method Products Inc. Method’s Amicus Brief (Corrected).