September 22, 2013
Design patents, the product equivalent of trademarks, are intended to ward off copycats. In High Point Design v. Buyers Direct (BDI), over the look of fuzzy slippers, the CAFC lays out the latest over design patent novelty. BDI's Snoozies® takes it on the chin from High Point's Fuzzy Babba®.
High Point Design v. Buyers Direct (CAFC 2012-1455) Judges O'Malley, Schall (author) and Wallach
When assessing the potential obviousness of a design patent, a finder of fact employs two distinct steps: first, "one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design"; second, "[o]nce this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design." Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (internal quotations omitted); see also Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012).
Under the first step, a court must both "(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates 'basically the same' visual impression." Durling, 101 F.3d at 103. The ultimate inquiry in an obviousness analysis is "whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved." Id., quoted in Apple, 678 F.3d at 1329.
The CAFC's approved discerner of design is a designer, not a more easily confused consumer.
[A]s set forth in In re Laverne, 356 F.2d 1003 (CCPA 1966), and holding: "In design [patent] cases we will consider the fictitious person identified in § 103 as 'one of ordinary skill in the art' to be the designer of ordinary capability who designs articles of the type presented in the application.");
Although obviousness is assessed from the vantage point of an ordinary designer in the art, "an expert's opinion on the legal conclusion of obviousness is neither necessary nor controlling." Avia Grp., 853 F.2d at 1564.
A footnote on the taboo of patenting designs that are dictated by their functionality.
An inventor can, upon meeting all statutory requirements, obtain a design patent for "any new, original and ornamental design for an article of manufacture...." 35 U.S.C. § 171 (emphasis added). Based on this requirement, a design patent can be declared invalid if the claimed design is "primarily functional" rather than "primarily ornamental," i.e., if "the claimed design is 'dictated by' the utilitarian purpose of the article."
The district court had botched its job, so the CAFC reversed and remanded.
Posted by Patent Hawk at September 22, 2013 3:14 AM | Design Patents