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: 

• How the USPTO is preparing to examine applications filed under the Hague Agreement
• Rules and techniques relating to claiming icons and graphical user interfaces in the United States and Japan
• Microsoft’s design patent portfolio
• Design patents in post-grant proceedings
• Best practices to obtain the strongest protection of industrial designs in the United States

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

Design Patents in the Modern World Conference

Date: April 5-6, 2013

Location:  Stanford Law School.  The Law School is located at 559 Nathan Abbott Way, Stanford CA 94305.

Conference description:

“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.”

Confirmed speakers:

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. 

Giles S. Rich American Inn of Court

What: Panel Discussion entitled “A Deep Dive Into Design Patent Law”

When: 5:30pm, February 13, 2013

Where: Washington, DC, U.S. Court of Appeals for the Federal Circuit

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

Program Description

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).

My recent article entitled “Apple v. Samsung: Design Patents Take Center Stage” (Volume 5, Number 3, Jan/Feb 2013) was published in the Jan/Feb 2013 edition of the ABA’s Intellectual Property Law Section’s magazine Landslide.  Below is the introduction from the article along with an outline of the article. 

         After operating in the IP backwaters for years, design patents took center stage in the epic battle in Apple v. Samsung.[ii]  What ensued was a dispute, centered on design rights, between two consumer tech titans that captured the nation’s attention – indeed the world’s. The case’s grip was felt not only in legal circles, but also in the mainstream press and media.  After all, the case regarded symbols of our time – devices such as smart phones and tablets that impact our everyday lives.  Indeed, the Wall Street Journal touted the case as “The Patent Trial of the Century.”[iii]  Even the evening talk show circuit chimed in with both Conan O’Brien and The Colbert Report putting on skits that riffed on the case.  Never has a patent infringement case, let alone one centered on design patents, received so much attention.  

         On August 24, 2012, before a packed courtroom, the most exciting words in legal theater were uttered: “The jury has reached its verdict.”  The future of the smart phone and tablet market weighed in the balance.  As the world tuned in, the jury’s findings were read aloud. Feverish tweeting and blogging abound, the verdict was bold and decisive: a $1.05 billion dollar verdict in favor of Apple, which if sustained will represent the largest patent infringement jury award of all time.[iv]  All 28 accused Samsung products were found to infringe; all of Apple’s patents were found to be valid.  Even recognizing that scores of JMOL’s are pending and inevitable appeals surely will follow, the verdict itself represents a coming out party for design rights in general.  By taking the heavyweight boxing match into the tenth round, and the prevailing, the strength of design patents surprised many, most assuredly Samsung.

      In short, this article seeks to: (1) provide the facts and background necessary to understand the blockbuster dispute, (2) extract the critical implications of the jury’s verdict, and (3) offer insights into potential outcomes and impacts as the case proceeds.  The thrust of this article will focus on design patents,[v] which comprised the lion’s share of the billion dollar damages award.[vi] 

A link to a .pdf of the full article is provided here. Carani Lanslide Article Design Patents Take Center Stage (Jan-Feb 2013).

On April 8-9, 2013, the European Union will be hosting a major international design conference to commemorate the 10th Anniversary of EU’s Registered Community Design (“RCD”).   OHIM  registered its very first RCD application in 2003. Since that date, the RCD has grown in popularity. Nearly 720,000 designs have been registered over the course of the past decade, increasing at the rate of 87,000 a year.  The conference will be hosted at the EU’s Office for the Harmonization in the Internal Market (OHIM) in sunny Alicante, Spain. 

The conference will include presenations on a variety of design law issues from 29 speakers, including representatives from OHIM and WIPO, the judiciary, academics, in-house-counsel and private practitioners.   I will be presenting on the topic of global design protection in the consumer electronic space, including cutting-edge strategies for protecting graphic user interfaces, icons and apps.  Information on the conference can be found at: http://www.10yearscommunitydesign.oami.europa.eu/.  The conference is open to the public.

Current Roster of Confirmed Speakers (with links to bio profiles):

António Campinos OHIM President

David Stone Simmons & Simmons

Pierre Delsaux Deputy Director General, DG Internal MArket and Services (BE)

Christopher V. Carani  McAndrews, Held & Malloy Ltd. (US)

Prof. J. M. Otero Lastres University Professor

Paul Maier OHIM President of the Boards of Appeal

Javier Mariscal Designer

Gerhard Bauer Daimler AG, INTA Immediate Past President

Théophile Margellos OHIM Chairperson, 1st & 3rd Boards of Appeal

Dr Henning Hartwig Bardehle Pagenberg

Quique Dacosta Quique Dacosta Restaurant

Paco Torreblanca Pastelería Totel

Elisabeth Fink 3rd & 4th Boards of appeal, OHIM

Grégoire Bisson Head of international Industrial Design Registry WIPO (CA)

Ludmila Čelišová Designs Service OHIM

Fabio Angelini De Simone & Partners, (IT)

Isabel Roig  Vice-President, BEDA

Juan Antonio García Solera Architect

Arnaud Folliard OHIM  Legal Service

Trevor Little Editor WRT Magazine (UK)

Krystian Maciaszek Kulikowska & Kulikowski (PO)

Christian Guellerin , Head of Cumulus Network (FR)

Gitte Just CEO, Danish Design Association 

Stefan Martin  OHIM 1st Board of Appeal

Darren Smyth Partner in charge of the EIP Elements Practice Group

Marcus Höpperger  Acting Director, WIPO

Jean-Jacques Canonici Procter & Gamble, Director & Patent Manager, Innovation, EMEA

Dr. Jakub Pinkowski Designs Service OHIM (PO)

Johanna Brückner-Hofmann Judge, Düsseldorf Landgericht (DE)