A Tale Of Two Motions: A Closer Look At Motions To Dismiss In Design Patent Cases

Published date27 July 2022
Subject MatterIntellectual Property, Patent
Law FirmFinnegan, Henderson, Farabow, Garrett & Dunner, LLP
AuthorMs Elizabeth Ferrill and Haley Chow

For most people, what comes to mind when they hear the word "patent" might be an invention like the lightbulb-Thomas Edison's version rather than Sawyer and Man's, probably-or the telephone-another hotly-contested invention between Alexander Graham Bell and the lesser-known Elisha Gray. What the average person might not be aware of is the type of patent intended to protect "any new, original, and ornamental design for an article of manufacture." This is the domain of the design patent, codified in 35 U.S.C. § 171, more than 50 years after patents themselves were established in 1790. See "A Brief History of Design Patents."

Design patent infringement occurs when a defendant applies a "patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale," 35 U.S.C. § 289, or makes, uses, offers to sell, sells or imports any article of manufacture bearing the patented design under 35 U.S.C. § 271. Traditionally, design patents covered physical designs that had some tangible effect on the shape, or texture of the "article of manufacture." See, e.g., Hall v. Bed Bath & Beyond, Inc., 705 F.3d 1357, 1361 (Fed. Cir. 2013); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1327 (Fed. Cir. 2015). Over time, design patent protection extended to cover screen layouts and graphical user interfaces ("GUIs"). Apple Inc. v. Samsung Electronics Co., 735 F.3d 1352, 1375 (Fed. Cir. 2013), demonstrated the viability of using a design patent to protect a GUI. Apple asserted that Samsung infringed six patents-three design patents and three utility patents. Two of the design patents related to the ornamental design of the physical iPhone, and one design patent focused on the ornamental design of iPhone's GUI. Id. The design patents played a significant role in Apple's success on remand, and much of the jaw-dropping $399 million damage award can be attributed to design patent infringement. Thus, design patents can be powerful tools which provide protection for even intangible design elements.

But how does one determine whether a design patent has been infringed? Courts rely on the ordinary observer test, which asks if a typical consumer of the accused product, or "ordinary observer," would find substantial similarities between the patented design and the accused design such that he or she would be deceived into purchasing the accused design believing it is the patented design. Arminak & Assocs. v. Saint-Gobain Calmar, Inc., 501...

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