Author: Ashley Clever, Contributing Member, University of Cincinnati Law Review
When marketing a new product, a business will often need to protect both the functionality and the overall design of a product to prevent competitors from producing an identical copy. While a utility patent covers a product’s functional features—how it works and what it does, a design patent can product a product’s aesthetic features—its design and how it looks. Design patents however, provide notoriously little protection and are often construed only to cover the exact design. The Federal Circuit Court of Appeals has provided very little guidance in defining what a design patent protects, with even minute changes in design or ornamentation sometimes enough to overcome a patented design. The recent case of Apple v. Samsung depicts the vacillating decisions in the court’s determination of what does or does not constitute design patent infringement. These fluctuating court decisions create unnecessary confusion in determining the proper scope of design patent protection, leaving inventors as well as competitors with increasing uncertainty.
Design Patent Protection
The right to patent inventions is granted by the Constitution in Article 1: “Congress shall have the power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The Patent Act, codified in 35 U.S.C., states that “[w]hoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to designs, except as otherwise provided.” A design patent provides protections for a term of fourteen years from the date of the grant of the patent, and covers the ornamental design for an object that has practical utility. A design patent may cover the configuration or shape of an article, the surface ornamentation of the article, or both. While a utility patent protects the way an article is used and works, a design patent protects the way it looks. Unlike a complicated utility patent, a design patent usually contains a single claim (“I claim the ornamental design as shown as described”) and drawings of various viewpoints of the design.
The Development of Design Patent Case Law
The first landmark design patent case came in 1871 in the Supreme Court decision Gorham v. White. Gorham and Co. (Gorham) obtained a patent for a new design for the handles of silverware utensils, namely spoons and forks. The design was a “cottage pattern” and became very popular. White began producing a very similar-looking design, and Gorham filed suit for patent infringement, alleging that the design was substantially the same as the patented “cottage pattern” handle design. The court articulated an “Ordinary Observer” test, stating,
[i]f in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.
The Court held that White’s design was infringing Gorham’s patent, as the ordinary observer would not be able to substantially distinguish the two designs (shown below).
In the 1984 case of Litton v. Whirlpool, the Federal Circuit held that the “Ordinary Observer” test was insufficient to establish design patent infringement, creating an additional requirement that a patented design must be novel over the prior art. The United States Patent and Trademark Office (USPTO) only grants design patent applications to designs that are sufficiently novel, but this court-imposed additional requirement allowed infringers to attack the validity of the design patent by arguing that the ornamentation of the patented design was not sufficiently different from other designs in the industry. In Litton, Litton Systems owned a design patent for their microwave oven model when Whirlpool began producing a similarly designed microwave. The court held that Litton must be able to distinguish their patented design from all other prior art products to establish the novelty of the design. Following Litton, plaintiffs alleging design infringement must show both that an ordinary observer would view the designs as substantially the same so as to deceive an ordinary purchaser, and that their patented design possessed particular novelty to distinguish it from other similar products.
This “Point of Novelty” test was disregarded by the Federal Circuit in 2008 in Egyptian Goddess v. Swisa, which held that the “Ordinary Observer” test was the sole test to be used but the court could look to prior art designs as merely a factor as to how an ordinary observer would view the product. Egyptian Goddess brought suit against Swisa for allegedly infringing their design patent for a nail buffer consisting of various buffering surfaces on three of its four sides. Swisa’s design was also rectangular and had buffering surfaces on all four sides. Prior to Egyptian Goddess’s invention, nail buffers had been made in a triangular shape with three surfaces or as a rectangular block of one continuous surface (see image below). The Court held that a competing design will not constitute patent infringement unless it embodies “any colorable limitation” of the design, finding that Swisa had not created an infringing design.
In 2010, the Federal Circuit decided Crocs v. ITC, regarding Crocs’ patented shoe design and ITC’s similar shoe configuration, featuring slightly different hole shapes and arrangement and a modified toe box. The court found that ITC had infringed on Crocs’ design patent, stating that “. . . minor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement.”
The fine line between an infringing and non-infringing design was shown by Victor Stanley v. Creative Pipe, decided by the District of Maryland in 2011. The case involved three different competing bench designs. The patented design (shown below) featured arching handrails and uniquely shaped feet. Two competitors, Nebilli and Chipman, began producing very similar bench designs. The court found that the Nebilli bench (pictured right) was substantially indistinguishable to an ordinary observer, and infringed the patented design. The Chipman design, however, featured a nearly identical aesthetic with an added ornamental oval. The court held that the Chipman bench did not infringe the design patent. The Court stated that,
The overall effect of the design with the oval below the seat, while certainly taking advantage of the graceful curves designed into the patented design, creates a different and distinctive look that would not confuse the ordinary observer. Each of the individual ornamental elements may be almost identical in isolation, but the overall impression is aesthetically different.
Differentiating Bench (bar at bottom) *
Infringing Bench *
Apple v. Samsung
Today’s ever-increasing changes in technology further blurs the fine line between what does or does not constitute design patent infringement. In the world of smartphones and tablets, minor improvements or changes in design can be highly marketable. The newest version of a popular smartphone may have very miniscule changes in design and utility, yet consumers stand in line for hours desperately awaiting the newest versions arrival. The Federal Circuit recently addressed the question of design patent infringement in modern technology in the case of Apple v. Samsung.
Apple v. Samsung began in the Northern District of California in 2012, where the jury found that twenty-six Samsung products infringed upon six of Apple’s patents, three utility patents, and four design patents. The products covered various embodiments of smartphones and tablets that contained a large rectangular display occupying most of the phone’s front face, with little ornamentation, rounded corners and a rectangular speaker slot. The jury awarded Apple $1.049 billion in damages for Samsung’s infringement of three utility patents and three out of four design patents.
Apple Design Patent (left), Samsung phone (right)
Apple iPhone (left), Samsung phone (right)
In waging an impressive smartphone and tablet battle, Apple and Samsung filed over fifty different lawsuits in nine different countries. Samsung, a previous supplier of Apple products including the iPhone and iPad, allegedly did not merely copy the technology features of the new smartphones, but also infringed the ornamental design of the products. The Samsung phone had a very similar overall appearance, with similar screens, icons, lack of buttons, and even a very similar box and packaging. The jury found that the Samsung smartphone infringed Apple’s patented designs, but found that the Samsung tablet did not infringe Apple’s patented iPad design. At first glance, the iPad may seem to be simply a larger version of the iPhone, however, the jury did not believe that an ordinary observer would confuse the two tablet designs.
Samsung exemplifies the nuanced details and the fine line between what infringes a design patent and what does not. With the current state of case law, patent holders have no security in knowing the scope of protection afforded by their patent except to prevent exact, identical infringement. The Federal Circuit seems to be following a “gut reaction” guideline of what they believe is permissible competition and what has crossed the line, casing their argument as the observations of an ordinary observer or ordinary consumer. Furthermore, in Samsung, the jury found that Samsung’s tablets did not infringe Apple’s iPad design patent; however, Samsung’s smartphone devices were found to infringe Apple’s iPhone patent design, which nearly mimic the exact design configuration of Apple’s iPad. The variations between an Apple iPad and iPhone, besides size, are quite minute—yet made all of the difference in the eyes of the jury and court.
Intellectual property law, and specifically patent protection, exists to incentivize the creation of new works to promote the progress of society. Design patents typically cost between $2,000-$3,000 with legal fees, and in turn, patent holders are granted fourteen years of patent protection to prevent others from making, using, or selling products infringing their patented design. Congress has agreed to grant this protection for a limited time as consideration for inventors to disclose their exact designs and allow others to build upon the innovative concepts at the expiration of their patent terms. This public policy of exchanging protection for public disclosure was explicitly enumerated in the Constitution and has been a foundational principle for centuries.
The court-imposed limitations on these design patents’ protective rights eliminates the proper consideration for the dissemination of knowledge—and fails to uphold the government’s half of the bargain. While design patents do not need to be so liberally construed as to impede competition, the courts should acknowledge their proper scope of protected rights. These uncertain standards create such confusion as to cripple a design patent holder’s rights if competitors infringe designs without recourse by the court. The Federal Circuit’s standards should correlate with the USPTO’s issuance of design patents in order to afford design patent holders the protection they deserve.
* Image by Christopher V. Carani, Esq., used with permission. Christopher V. Carani, Design Patent Infringement—How Close Is Too Close?, Design Patent Attorney (Sept. 7, 2012), http://designpatentattorney.com/design-patent-infringement-how-close-is-too-close-an-empirical-study/.
 Both utility and design patents are protected by Congress under 35 U.S.C., known as “The Patent Act.”
 The Supreme Court grants certiorari in very few intellectual property cases and even fewer design patent cases; therefore, the decisions of the Federal Circuit Court of Appeals are considered to be authoritative guidance.
 Apple Inc. v. Samsung Elecs. Co., 735 F.3d 1352 (Fed. Cir. 2013).
 U.S. Const. Art. 1 Sect. 8 Clause 8.
 35 U.S.C. §171.
 35 U.S.C. §173.
 MPEP §15.43.
 MPEP §1502.01.
 Gorham Co. v. White, 81 U.S. 511 (U.S. 1872).
 Id. At 528.
 Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984).
 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).
 Id. at 679.
 Crocs, Inc. v. ITC, 598 F.3d 1294 (Fed. Cir. 2010).
 Id. at 1303.
 Victor Stanley, Inc. v. Creative Pipe, Inc., 2011 U.S. Dist. LEXIS 112846 (D. Md. Sept. 30, 2011).
 Victor Stanley, Inc. v. Creative Pipe, Inc., 2011 U.S. Dist. LEXIS 112846 (D. Md. Sept. 30, 2011).
 Id. at 57.
 Apple Inc. v. Samsung Elecs. Co., 888 F. Supp. 2d 976 (N.D. Cal. 2012), see also Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012) (discussing Samsung’s appeal of the preliminary injunction granted by the trial court, affirming the holding in part and reversing in part).
 Apple, 678 F.3d at 1317.
 Florian Mueller, Apple Seeks 25 Billion in Damages, Foss Patents, http://www.fosspatents.com/2012/07/apple-seeks-25-billion-in-damages-from.html, July 24, 2012. The various cases litigated a variety of issues, including the infringement of various Apple utility patents covering functional elements such as the over scroll bounce “rubber banding,” tap to zoom, navigational features, and scrolling API technology. Id.
 Kurt Eichenwald, The Great Smartphone War, Vanity Fair, http://www.vanityfair.com/news/business/2014/06/apple-samsung-smartphone-patent-war , June 2014.
 Typically, in areas such as trademark law, defendants are required to show consumer interpretations to determine how they view products and if they are or are not confused. This is usually accomplished through consumer surveys and polls.
 Erickson Law Group, How Much Does a Patent Cost, http://www.ericksonlawgroup.com/law/patents/patentfaq/how-much-does-a-patent-cost/ (last visited February 11, 2015). Actual filing cost of a design patent is only approximately $180, see USPTO, USPTO Fee Schedule, http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule (last visited February 11, 2015).