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High Point v. Buyer’s Direct; Knowing the Prior Art Maximizes Design Patent Value

By Phillip M. Pippenger - September 30, 2013

Most commentary regarding the U.S. patent system centers around utility patents.

However, the venerable design patent can also provide significant tactical and commercial value in the Federal Courts and the ITC. The most notable recent design patent case to highlight this fact may be the well-known Apple v. Samsung series of conflicts.

With the increasing value and usage of design patents, the case law has continued to evolve regarding the construction and validity of such claims. For example, a design patent that is found to be valid but not infringed (thus avoiding the prior art but claiming the design too narrowly), or infringed but not valid (thus claiming broadly but not avoiding the prior art), is of little use to the holder. In this regard, the relationship of the design patent claim to the prior art is clearly central to the resolution of an infringement claim.

The Federal Circuit has recently spoken to clarify that relationship, augmenting, and to some extent contradicting, the Court’s guidance in the seminal Egyptian Goddess decision of 2008. The High Point case involved an assertion of design patent infringement of U.S. D598183 pertaining to slipper socks. Figure 1 of the ‘183 patent is shown below for context:

The case also involved a counterclaim of invalidity. The district court in High Point granted summary judgment that the patented design was obvious and functional1, and thus invalid.

Upon review, the Court of Appeals for the Federal Circuit remanded the decision, finding that the district court erred in its treatment of the prior art. In particular, the Federal Circuit found that the district court failed to “(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.” With respect to the step of discerning the correct visual impression, the Federal Circuit scolded the district court for, essentially, not articulating a textual description that evokes the patented design. However, in the Egyptian Goddess decision noted above, the Federal Circuit criticized the district court for using written words to describe what is essentially a picture.

The High Point decision acknowledges the potential inconsistency and explains that the district court’s Egyptian Goddess design description was simply too verbose, while the district court’s High Point design description was simply too terse. As such, both decisions remain as precedent, and a written description, but without excess description, is now required of the district court.

Of greater interest to those trying to draft a design patent that maximizes protection while minimizing the chance of invalidity, the described design is then compared with the prior art design to determine if they are the same, or substantially the same. The comparison prescribed in the High Point decision is to perform a “side-by-side comparison …to determine if they create the same visual impression.” This militates toward a number of best practices when preparing design patent applications.

First, the drawings should of course be fairly detailed and well-drawn with respect to size, proportion, and textures so as to admit to easy comparison with potentially infringing copies. Secondly, anticipating a side-by-side comparison with the art, the drawings should clearly show or even emphasize areas of distinction over the art, e.g., a textured sole, an added strap, etc., so as to create a distinct visual impression. To this end, a proper prior art search can be helpful in identifying the closest prior art, whether that art be a prior commercial product itself, another design patent, or even a catalog picture.

While the case law regarding design patent infringement and validity will continue to evolve, it will remain important to place your design outside of the prior art. As such, those drafting or reviewing design patent applications should know the prior art, and should perform the prescribed side-by-side comparison prior to filing each application in order to maximize the commercial and tactical value of their design patent portfolio.

The attorneys of Miller, Matthias & Hull LLP are well-versed in the drafting and prosecution of design patent applications, and would be pleased to assist you in this regard with your next design innovation or design patent analysis. Should you wish to learn more, or if you have a specific situation in mind, we can always be reached at (312) 977-9902.

1 Because design patents are intended to cover ornamental designs, any functional features may be disregarded in analyzing the claim or, if substantial, may be used to invalidate the entire claim as solely functional and thus ineligible for design patent protection.