Design Patents - Who Dunnit?: Design Patents Cover 'Designs,' Not 'Design Concepts'

When someone has a new idea, they often turn to intellectual property attorneys to help them protect their idea. It is important to remember that each form of intellectual property has a role to play in serving this overall goal. For design patents, it is protecting the appearance of an article of manufacture.

Design patents have many roles, depending on the circumstances. But at their heart, they cover the design displayed within their figures, not a more general design concept. Keep in mind that the scope of a design patent is determined by the solid lines of the patent figures. And infringement of a design patent is assessed from the point of view of an ordinary observer familiar with the prior art. The basic inquiry is whether the claimed design is substantially similar to the article accused of infringement.

These are some golden tenets of design patent practice that are sometimes overlooked by design patent owners, perhaps in their efforts to earnestly protect an idea they think is theirs. Consider three recent cases.

Number 1: The Case of the Roomie Bloomers

In Anderson v. Kimberly-Clark Corp., No. 2014-1117 (Fed. Cir. July 10, 2014), the design patent was directed to an "absorbent disposable undergarment":

Ms. Anderson filed suit in Washington state against Kimberly-Clark, maker of Depend® and GoodNites® brand absorbent undergarments for adults and children, respectively.

The district court dismissed the complaint for failure to state a claim of infringement, and the Federal Circuit affirmed. The district court found that Ms. Anderson's complaint had "fallen well short of a viable infringement claim." Id., slip op. at 6 (citation omitted). The Federal Circuit affirmed the district court's application of the "ordinary observer" test and the at least three "most striking" differences between the patented design and the Depend® products, including the "bloomers-style" of the claimed design and the "briefs-style" of the accused product. The Federal Circuit also agreed that there were at least four major differences between the GoodNite® product and the claimed design.

Number 2: The Case of the Shocking Brass Knuckles

In P.S. Products, Inc. v. Activision Blizzard, Inc., No. 4:13-cv-00342 (W.D. Ark. Feb. 21, 2014) (granting motion to dismiss), one plaintiff is the inventor of two design patents directed to designs for "stun guns," which appear to resemble brass knuckles. The other plaintiff is the manufacturer of a product embodying...