These downloadable materials from a past live presentation address basic marking requirements and best practices for patent marking, as well as requirements for virtual marking, alternative marking on a label or package, ways the sufficiency of marking can be challenged, and false marking. These materials cover the ins and outs of patent marking in a format packed with real-world examples.
Marking is simple enough in concept but there are a surprising number of nuances and practical challenges for implementation. Also, the America Invents Act (AIA) reshaped numerous aspects of marking that continue to reverberate. For instance, virtual marking was introduced with the AIA and there is now a growing body of court decisions clarifying what kinds of virtual marking practices are sufficient and what kinds are not. These practical aspects of marking are addressed in these program materials.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
When can prior art be used to assess alleged infringement of a design patent? This has been an evolving area of U.S. patent law. The question matters because looking at only the asserted patent and the accused product might not allow an ordinary observer to understand the ways in which the patented design is similar (or dissimilar) from known designs. A recent court decision sheds some light on the issue while at the same time muddies the waters in light of past cases that reached seemingly different results.
When assessing design patent infringement, “when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art. . . .” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc). This is essentially a three-way visual comparison, in which differences “that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer . . . .” Id. This is not about validity/invalidity but rather about how prior art informs the comparison of the patented design and the accused product to determine if there is infringement or not.
A recent Federal Circuit decision addressed what sort of prior art can qualify as comparison art. In the second appeal in an ongoing dispute, a Federal Circuit panel held that “to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim.” Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., Nos. 2021-2299 and 2021-2338, Slip Op. at *21-23 (Fed Cir. Sept. 15, 2023) (“Columbia II“).
In reaching that conclusion, the ColumbiaII panel cited one Supreme Court case from the 1800s, plus Egyptian Goddess and further said that “[s]imilar examples abound”. But do they really? The Columbia decision cites only a single post-Egyptian Goddess precedential case that was not abrogated (ABC Corp. I v. P’ship & Unincorporated Ass’ns Identified on Schedule “A”, 52 F.4th 934 (Fed. Cir. 2022)), plus one non-precedential case (Wallace v. Ideavillage Prods. Corp., 640 F. App’x 970, 971, 975–76 (Fed. Cir. 2016) (nonprecedential)).
Two other case citations in Columbia II rely on portions of opinions (Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1318, 1324–25 (Fed. Cir. 2007) and Unidynamics Corp. v. Automatic Prods. Int’l, Ltd., 157 F.3d 1311, 1313, 1324 (Fed. Cir. 1998)) that dealt with the “point of novelty” analysis that was specifically overruled by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678-79 (Fed. Cir. 2008) (en banc). ColumbiaII’s citations do not include any identifications any portions of the cited cases that were abrograted, or otherwise explain why or how specific aspects of those point of novelty analyses were still valid and relevant—as was the case in Egyptian Goddess, there might still be similarities although the theoretical framework and thus the purpose of looking at the prior art is different.
Then in a lengthy footnote 8 the Columbia II panel attempts to explain away a prior precedential case that reached a seemingly contrary outcome, Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020). If an attorney submitted a brief written in such a manner, she would at a minimum probably be harshly scolded by the presiding judge(s), and at worst be sanctioned. But apparently this Federal Circuit panel (Judges Prost, Reyna, and Hughes) has no qualms about doing this themselves. It is possible to argue that the Columbia II decision, although designated as precedential by the panel, is actually non-precedential due to being in conflict with Lanard Toys. See Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988) (when Fed. Cir. panel decisions are in conflict, the later one is non-precedential).
In any event, one issue that footnote 8 of Columbia II does not fully address is the question of comparison art when the claimed article is specifically a simulation, and to the extent that it does that footnote may not be controlling. MPEP § 1504.01(d) (9th Ed., Rev. 07.2022, Feb. 2023) deals designs attempting to claim articles that are simulations of something else. The Columbia case does not specifically address In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965), which dealt with the use of something other than the same article as prior art to affirm a rejection of a claimed design. There, the claimed design was a “promotional advertising souvenir”, whereas one of the prior art references was a mere “representation of a conventionalized teardrop.” Id. at 982-83. In particular, the claimed design showed a teardrop shape article that was hollow with transparent walls, within which appears a planar member shown in dotted lines, on which advertising matter is to be placed, and additional prior art was cited for the proposition that display devices inside of hollow transparent containers were known—the fact that the interior components were in broken lines meant that their specific content carried no patentable weight. Id. at 983-84. Partly the issue raised here is whether Wise was—or could be—abrogated by In re Surgisil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021), which did not specifically address Wise or a “simulation”-based rejection, or other seemingly contrary precedent like In re Glavas, 230 F.2d 447, 450 (CCPA 1956) (“there can be no question as to nonanalogous art in design cases”). Surgisil overturned a patent office rejection premised on the title of the application not limiting the scope of the claim of a pending design application, where the applied-for design was titled a “lip implant” but the cited prior art having essentially an identical shape was for an artist’s “stump” blending/smudging tool. That result in Surgisil stands in contrast to both Glavas, which said use and non-analagous art issues are irrelevant to patentability of designs, and Wise, which cited a mere representation of a teardrop that was not, specifically, a “promotional advertising souvenir” as claimed.
Another way to look at this is to say that footnote 8 of Columbia II is mere dicta and not binding, because Columbia II did not deal with allegations that an asserted patented design was a “simulation”. From that perspective, the footnote 8 discussion about waiver of arguments can be disregarded (the very fact that this discussion was placed in a footnote rather than in the main text provides some support for viewing it as mere dicta). This is significant because the Columbia II panel could not overrule Lanard Toys, and neither the Columbia II panel nor the Surgisil panel could overrule Wise or Glavas. SeeSouth Corp. v. U.S., 690 F.2d 1368, 1369 (Fed. Cir. 1982) (“the holdings of . . . the United States Court of Customs and Patent Appeals, announced . . . before the close of business September 30, 1982, shall be binding as precedent in this court.”); Newell, 864 F.2d at 765.
The Columbia II panel argues that “using the same scope for anticipatory prior art and comparison prior art makes good practical sense.” This is asserted without addressing the (“wise”) reasoning of the Wise decision, which set out contrary practicalities when an asserted design is alleged to be a simulation. That is, Wise pointed out that a design may not be patentable if it merely simulates a known shape from another context, and a patentee cannot obtain exclusive rights by merely reproducing essentially generic representations—a concern that in many ways mirrors cases about utility patent eligibility where results are recited coupled with only generic or conventional computerization hardware. Cf., e.g., Elec. Power Group, LLC v. Alstom SA, 830 F.3d 1350 (Fed. Cir. 2016) (claims were patent-ineligible abstract ideas because they did not require “use of anything but entirely conventional, generic technology.”).
Other areas that remain somewhat unresolved pertain to partial claims, multi-part articles, and language reflecting intended use. For instance, if a design patent is for a “motorcycle with windscreen,” is prior art to a motorcycle alone (without a windscreen) available as comparison art, or prior art to a windscreen in isolation? Or a combination of both motorcycle and windshield comparison references? Does the answer depend at all on whether or not broken lines are used in the patent to make a partial claim? There a risk that design patents could gain inappropriate coverage over combinations of known (useful) elements in their functional capacity if and when the only available prior art shows merely some but not all of the components together in a single reference. And what about mere intended use language in the title of the patent? If the claim is to a “cat toy” and the prior art was expressly marketed as a “dog toy”, can the dog toy be used as comparison art, when both cats and dogs could actually play with either toy? Both instances involve a toy (and an animal toy no less), and differ only in the intended use by a different animal. There is older precedent stating that “the use to which an article is to be put has no bearing on its patentability as a design and that if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is.” Glavas, 230 F.2d at 450.
These sorts of questions put added emphasis on the still-ambiguous role of claim construction in design patent litigation, as well as the need to carefully sect a title for a new design patent application. Parties to litigation now have added incentive to argue about claim construction in design patent cases, because the proper construction will determine not only the scope of the claim but also the availability of comparison prior art.
October 2023
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
This presentation and downloadable materials addresses basic requirements and best practices for virtual patent marking, as well as requirements for traditional/physical marking, alternative marking on a label or package, and false marking. Suggestions for implementing virtual patent marking are provided along with examples and hypotheticals used to discuss some of the practical challenges of virtual marking and where there continues to be areas uncertainty. More information about patent marking is available in this detailed guide and this brief overview.
Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.
Materials from a presentation by Austen Zuege and Jonathan Bench about patent assignments and rights of priority, including presentation slides and an on-demand video recording, are available here:
Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.
At the beginning of 2023, following a year in which new filings declined, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.
Patents
Reduced official fees for small and micro entities
A change in the U.S. patent laws governing fee reductions for small and micro entities was passed as a small part of a wide-ranging legislative budgetary package at the very end of 2022. The relevant portion was titled the Unleashing American Innovators Act of 2022. It is characteristic of U.S. politics that certain non-budgetary matters like this are appended to budgetary legislation shortly before passage during a holiday season with little public discussion. These patent fee reductions therefore came as somewhat of a surprise. As of December 29, 2022, most official patent fees are now discounted by 60% for small entity applicants (previously this was only a 50% reduction) and by 80% for micro entity applicants (previously this was only a 75% reduction). These reductions apply to most official fees associated with initial filing fees for new applications, actions during examination (such as extension of time fees, request for continued examination [RCE] fees, etc.), as well as fees after grant such as maintenance fees. The requirements to qualify as a small or micro entity are unchanged.
The newly amended law further gives the USPTO power to impose fines for false assertions of small or micro entity status of no less than three (3) times the fee underpayment—with no pre-defined upper limit on that amount. Such fines are not yet in effect and will require the USPTO to first issue implementing regulations that will establish exactly how they will be assessed. However, depending on the scope of later regulations, this creates the possibility of significant penalties for innocent or negligent errors. Historically, a fraudulent assertion of small or micro entity status, done knowingly or willingly with intent to deceive the USPTO, would qualify as inequitable conduct that renders the associated patent unenforceable. But the appeals court responsible for all patent appeals set the threshold for the required intent to deceive extremely high. While the possibility for unenforceability due to intentional fraud will remain, the USPTO will have new authority to impose fines if the assertion of entitlement to small or micro entity fee reductions was merely “false”. There is no explicit statutory requirement for such a “false” assertion to be made with intent to deceive. Thus, the USPTO can potentially impose fines without establishing intent to deceive, potentially including even good faith mistakes. Failure to pay such fines will likely have an impact of the enforceability and/or abandonment/lapse of an associated patent or application. It is unclear how the USPTO will discover or otherwise come to know about false assertions of entity size in order to subject applicants and patentees to fines. It will therefore be important to monitor subsequent USPTO regulations regarding these fines and to see how existing safe harbor provisions for correction of good faith errors will be affected, if at all. In the meantime, this highlights the need to accurately determine entity size status and to notify the USPTO at the appropriate time if entitlement to reduced fees is lost.
Non-DOCX filing format requirements postponed (again)
The highly unpopular surcharge for U.S. non-provisional utility patent applications in a non-DOCX file format has been postponed until January 17, 2024 [Update: this deadline has been again postponed beyond a previously-announced April 3, 2023 and June 30, 2023 implementation deadlines]. Although even when in effect this surcharge will not apply to PCT national phase entries, provisional applications, plant applications, or design applications. Additionally, the USPTO has extended a highly limited opportunity to file a back-up applicant-generated “Auxiliary PDF” version of an application filed in DOCX format indefinitely, in order to potentially allow for later correction of USPTO-side conversion errors involving the DOCX version. These postponements and extensions are the result of many objectionsfrom U.S. patent practitioners and practitioner organizations.
The non-DOCX surcharge is part of the USPTO’s plans to automate certain administrative tasks to reduce administrative overhead costs and staffing associated with legacy systems for processing application materials. While touted as providing benefits to applicants and practitioners, the reality is that there are no meaningful benefits to applicants or practitioners. But, alarmingly, the USPTO has pushed forward with its cost-cutting objectives despite substantial problems apparent with its new Patent Center platform used for DOCX format filings and its tendency to introduce errors. In effect, the USPTO has prioritized budgetary cost-cutting over maintaining the integrity of the contents of newly filed patent applications. This is what has troubled practitioners most of all.
In brief, the Patent Center system alters uploaded DOCX-format patent application files and has been shown to introduce errors in the substantive content of some uploaded applications. These errors occur only some of the time, but in a significant enough percentage of cases for it to matter. This creates new burdens on applicants and their U.S. patent counsel to review uploaded applications to try to identify errors introduced by the USPTO’s electronic filing platform. These burdens are particularly difficult to manage for U.S. applications based on a Paris Convention foreign priority claim, where U.S. counsel did not prepare the original application and is therefore less familiar with the intended contents. In addition, the USPTO has greatly limited opportunities to correct errors resulting from the way its (proprietary) systems process, convert, “validate”, and alter uploaded application documents. In many circumstances (when a priority claim cannot be relied upon), corrections must be made within one year of initial U.S. filing and will require a petition fee larger than the non-DOCX surcharge. The USPTO has indicated it will deny petitions filed more than a year after initial filing seeking to correct errors that its proprietary computer systems introduced. Moreover, the non-DOCX surcharge is essentially punitive. It far exceeds the estimated administrative savings of $3.15 per application that the USPTO has been able to quantify. Most problems with the roll-out of the non-DOCX surcharge are the result of the USPTO committing to adopt certain proprietary computer systems based on a cursory and inadequate initial investigation of alternatives, greatly misunderstanding the stability and capabilities of the DOCX file format (and its alleged status as a “standard”), and having unrealistic goals for software development associated with implementation of a new proprietary filing platform (and unrealistic projections of net cost savings), coupled with a Kafkaesque disregard for the burdens imposed on applicants and the general public by its actions.
Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here. Bu applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content.
Hard copies of patents still being issued (for now)
[UPDATE: The USPTO has announced that electronic patent grants, now being called “eGrants”, will begin April 18, 2023. There will also be a transition period of unspecified duration during which paper ceremonial copies (with a certification statement and a special ribbon and seal) will still be issued in addition to an eGrant electronic copy. A paper presentation copy, certified copy, or ceremonial copy can be ordered for a fee after the transition period.] The USPTO previously announced that sometime in 2022 it would cease issuing paper patents and would issue only digital patents instead. However, the USPTO has continued to issue hard copies of granted patents and has made no further announcements about the date after which only electronic patents will be issued. Presumably, the USPTO will eventually cease to issue hard copies of patents (except upon an express request) but it is unclear exactly when that will occur.
Patent public search tool
The USPTO’s legacy open-access patent and published patent application search tools (PatFT and AppFT) have been retired. The PubEAST and PubWEST systems previously only available in-person (and to examiners) have also been retired. In their place a new Patent Public Search tool is now freely available online. It is based on the old PubEAST/PubWEST tools. Its new USOCR database allows U.S. patents granted before 1970 to be keyword searched—the old PatFT system previously had a 1970 cut-off for keyword searching. The launch of this new tool was rather awkward, with little training or instructional information initially provided on how to use it. But, since its launch, training guides and frequently asked questions (FAQs) have become available. This tool currently exists with two different interfaces: Patent Public Search Basic (PPUBS Basic) and an advanced search. Both allow U.S. patents and published applications to be searched simultaneously.
The Basic search interface allows granted U.S. patents and published patent applications to be fetched by number, and allows some keyword-based searches, but returns only PDF copies.
As the name implies, the advanced search includes advanced search functionality. Although the advanced interface is highly esoteric and non-intuitive, and the interface may not display properly on all computers (in particular, primary the input field near the upper left sometimes appears hidden when the tool is opened on computers with small display screens like laptops). The advanced interface is currently the only way the USPTO provides “full text” of published patent documents. PDF image versions are also available by clicking the “T / [camera icon]” button at the top left of the “Document Viewer” panel that normally appears at the right-hand side of the screen along with the text. Toggling that button allows switching between text or PDF image displays of a given patent document.
Fetching a particular patent or published application by number is surprisingly difficult with the “advanced” interface. A given patent can be queried using the “.pn.” field code or by typing in an “external search” URL to a web browser. But expect some frustration because these “external search” URLs do not seem to consistently work at all.
An alternative way to reach a particular U.S. patent or published application is to utilize the Patent Center interface and enter a patent or published patent application number. From the resultant record, there are links available to the Patent Public Search text versions of the published application and granted patent (if any) under the Patent Center “Application Data” tab. The button with the “T/[camera icon]” label can be clicked to toggle between a text view and a PDF image of the patent document in Patent Public Search. While navigating to patent documents through Patent Center requires many clicks, you might say too many, using it may still be easier than the other alternatives available through the USPTO.
More information about using Patent Public Search is available here.
More U.S. patent filing information
Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim.
Trademarks
Shortened response periods in effect
The time period for responding to U.S. trademark office actions is now only three (3) months. This shortened response period is indicated in new office actions. Applicants can, however, request a single 3-month extension of time by paying an official fee (currently $125 if filed electronically). An extension must be expressly requested by the original 3-month deadline. This shortened response period does not apply to Madrid Protocol extensions, which will still enjoy a full 6-month office action response period. Moreover, shortened response periods will not apply to post-registration office actions until October 7, 2023.
Unlimited window for expungement requests still open
Any party may request cancellation by expungement of some or all of the goods or services in a U.S. trademark registration because the registrant never used the mark in commerce with those goods or services. Normally an expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, a temporarily unlimited expungement filing period is in effect until December 27, 2023 during which expungement may be requested for any registration at least three (3) years old, regardless of the ten-year limit. In other words, the ten-year time limit for expungement proceeding requests will only go into effect after December 27, 2023. Expungement proceedings are available for all U.S. registrations but are especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required prior to registration. Additional general information about expungement proceedings is available here, and a listing of reexamination and expungement requests made to date is available here.
More U.S. trademark filing information
Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications.
January 2023
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
Abstract: This article provides critical analysis of the doctrine of assignor estoppel for patent assignments following the Supreme Court’s Minerva v. Hologic decision, which limited the situations in which the doctrine is available to those that involve a “contradiction” by the assignor that violate norms of “fair dealing”. An overview of the likely abrogation of prior Federal Circuit cases is provided. Although, as explained, there are significant policy disputes that underlie the doctrine that have not been definitively resolved, which will undoubtedly be the subject of dispute in future cases. Also addressed, and questioned, are corollaries and related Federal Circuit precedents involving privity, the effect of purported assignments of future inventions and the role of claim construction to preserve validity defenses. For the latter, an “assignor estoppel donut” is conceptualized to highlight the multiple boundaries involved, of which Minerva’s holding addressed only one. Lastly, an analysis of pragmatic assignment scenarios and potential areas of dispute around them is set forth, in order to inform both assignment drafting and negotiation, on the one hand, and legal disputes over existing assignments, on the other.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
What are the minimum requirements to establish enhanced damages for patent infringement after the passage of the America Invents Act (AIA) and the U.S. Supreme Court’s decision in Halo, and what evidence can be presented on this point? Post-Halo cases reveal areas of ambiguity and dispute. Some dispute involves willfulness theories falling close to the line between reckless conduct sufficient to establish willfulness and merely negligent conduct that is not willful. But a lingering ambiguity is how 35 U.S.C. § 298 may exclude from willful patent infringement certain conduct that might be considered reckless—and thus willful—in other areas of tort law. For whatever reason, § 298 has received little attention or treatment, which has even led to decisions contrary to that statutory provision.
A Brief History of Willfulness
Let us begin with some context for how willfulness has evolved in patent law.[i] Damages enhancement is governed by 35 U.S.C. § 284, even though the term “willful” does not explicitly appear there. In the early 1980s, the Federal Circuit established an affirmative duty of due care and an adverse inference of willfulness if the accused infringer did not both obtain advice of counsel and waive privilege to present an advice of counsel defense.[ii] Decades later, the Federal Circuit abolished the adverse inference in Knorr-Bremse.[iii] Then it abolished the affirmative duty of due care in Seagate, substituting a two-prong willfulness analysis requiring “objective recklessness” as a prerequisite.[iv] In the aftermath of those cases, the AIA introduced § 298, which prohibits use of the failure to obtain advice of counsel or make an advice of counsel defense to establish willfulness (or inducement).[v]
In 2016, the Supreme Court in Halo threw out the “objective recklessness” prerequisite, finding its “inelastic constraints” insufficient to allow courts to punish “the full range of culpable behavior.”[vi] The Court held that “culpability is generally measured against the knowledge of the actor at the time of the challenged conduct.”[vii] Therefore, “[t]he subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages, without regard to whether his infringement was objectively reckless.”[viii] The Court discussed how reckless conduct supports punitive damages where willful intent is required while merely negligent conduct does not, clarifying that “a person is reckless if he acts ‘knowing or having reason to know of facts which would lead a reasonable man to realize’ his actions are unreasonably risky.”[ix] The abrogated “objective recklessness” threshold had allowed classically reckless conduct to be exonerated by after-the-fact rationalizations, which meant that some reckless conduct was inappropriately shielded from punitive enhanced damages.[x]
Later Federal Circuit cases have interpreted Halo as abrogating the “objective recklessness” requirement in a relatively narrow way but leaving intact much other pre-Halo case law,[xi] which presents challenges for anyone trying to parse out the way older cases may have been abrogated only in part but are potentially still controlling as to other aspects. The Federal Circuit has maintained that “willfulness” is a question of intent involving the accused infringer’s state of mind that is for the finder of fact (jury) to decide,[xii] and knowledge of the asserted patent is a prerequisite to a finding of willfulness.[xiii] After willfulness is established, the question of enhancement of damages is then a question for the court (rather than jury) to decide[xiv]—though a willfulness verdict does not automatically entitle the patentee to enhanced damages.[xv] But a court’s discretionary moral judgment regarding enhancement does not depend on any preceding factual finding of a particular state of mind or level of intent of the infringer.[xvi]
District court decisions post-Halo have begun to explore the minimum requirements to plead and then introduce evidence of willfulness, though the Federal Circuit has not yet reached some of the new theories definitively. These various new theories address what it means to subjectively “have reason to know” that accused conduct presents an unreasonable risk of patent infringement in the absence of direct evidence that the accused party actually knew about the patent and that there was a high probability its conduct infringed, as well as the effect of the accused taking affirmative steps to avoid learning of such facts.[xvii]
New Theories of Willful Infringement
First, a number of district courts have found “willful blindness” to be an acceptable theory of willful patent infringement. Motiva from the Eastern District of Texas is perhaps the most widely known of these cases, holding that “[s]ince the Supreme Court has explained that willful blindness is a substitute for actual knowledge in the context of infringement, it follows that willful blindness is also a substitute for actual knowledge with respect to willful infringement.”[xviii] Willful blindness has two basic requirements: (1) the accused must subjectively believe that there is a high probability that a fact exists, and (2) the accused must take deliberate actions to avoid learning of that fact; these two requirements mean willful blindness has a limited scope that surpasses recklessness and negligence.[xix] To avoid dismissal, patentees must make “plausible” willfulness allegations regarding both requirements for willful blindness.[xx]
What has generated much discussion about willfulness theories relying on willful blindness is the role of “no patent review” corporate policies that (at least on paper) bar employees from reviewing competitor patents.[xxi] Yet the mere existence of such a “no patent review” policy is not per se sufficient to plead willful blindness for willful infringement unless there is also a plausible allegation that the accused party subjectively believed a high probability of patent infringement existed.[xxii] In practical terms, this means there must be something more than simply a blanket corporate policy that applies to any and all (competitor) patents and that “something more” must plausibly suggest a culpable state of mind with regard to infringement of the asserted patent.
Second, some courts have addressed other theories—distinct from “willful blindness”—that an accused infringer should have reasonably known about the asserted patent. For example, district courts are divided about whether actual knowledge of an unasserted family-related patent coupled with an allegation that the accused should have investigated that patent family to discover the asserted patent—such as a broader continuation or broadening reissue—is sufficient to support willfulness.[xxiii] At times, these other theories appear uncomfortably close to the old, abrogated affirmative duty of due care.[xxiv] These other theories seem less stringent and more expansive than willful blindness, partly because they fall close to the boundary between negligence and recklessness but also because decisions on these theories often contain little or no discussion of why the accused had reason to know that there was infringement of a later-issued patent and not merely reason to know that the later-asserted patent existed.[xxv]
Statutory Limits on Evidence of Willfulness Under § 298
But what about § 298? A curious feature of many post-Halo willfulness cases is how little that section introduced by the AIA is discussed or even cited by courts when dealing with issues to which it directly relates, namely the relevance of evidence under the second Read factor: “whether the infringer . . . investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed.”[xxvi] This is most troubling when courts proffer reasoning based on case law that was abrogated by § 298 (if not also by Seagate). Section 298 states:
“The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.”[xxvii]
There can be no question that § 298 excludes certain evidence from use to prove willfulness, including (1) the failure to consult an attorney and (2) the decision to maintain privilege over advice received from counsel. Yet an asymmetrical framework remains: the accused infringer is still free to obtain a legal opinion and later voluntarily present an advice of counsel defense based on that legal advice,[xxviii] but a “decision not to seek an advice-of-counsel defense is legally irrelevant under 35 U.S.C. § 298.”[xxix]
The key effect of § 298’s framework has to be that “having reason to know” for a (recklessness) willfulness theory must be limited to what the accused infringer reasonably should have known at the time without the assistance of counsel. The scope of the accused party’s (subjective) knowledge of the intricacies of patent law will vary considerably, though. For instance, lay parties might reasonably believe that broader later-issuing patents or reissues are not likely or that something like prosecution laches would apply to them.[xxx] This subjective knowledge may be difficult to even infer from circumstantial evidence in situations in which the accused did obtain advice of counsel but chooses not to waive privilege and not to make an advice of counsel defense based on that advice. And mere speculation on this point is generally inadequate. Moreover, as one district court held, attempts to suggest what the accused knew based on privileged communications not in evidence may be improper as a “disguised” attempt to circumvent the limits set forth in § 298.[xxxi] In a somewhat counterintuitive way, § 298 provides two distinct incentives to obtain advice of counsel because an accused party can either waive privilege in such advice and present an advice of counsel defense or maintain privilege and later potentially shield certain state of mind inquiries or inferences implicating that (maintained) privilege.[xxxii]
Does a Duty of Due Care Still Exist? And Does It Matter?
Seagate abrogated the affirmative duty of due care; but when Halo later abrogated the “objective recklessness” standard, a question arose as to the impact of Halo’s abrogation of the abrogation of the duty of due care.[xxxiii] The Federal Circuit has not explicitly weighed in on this point, and no Federal Circuit case since Halo mentions the term “duty of due care” at all. On the one hand, § 298 makes the existence or nonexistence of a judicially created duty of due care less important. But a real question remains about how patentee use of the second Read factor against an accused infringer may now be abrogated in whole or part. Can an accused party’s failure to conduct a nonlegal investigation of some sort regarding an asserted patent be used to establish willfulness today?
Worth mentioning at the outset is the Federal Circuit’s Broadcom case regarding induced infringement. There, despite the abolishment of the duty of due care, “[b]ecause opinion-of-counsel evidence, along with other factors, may reflect whether the accused infringer ‘knew or should have known’ that its actions would cause another to directly infringe, . . . such evidence remains relevant.”[xxxiv] This is not at all straightforward. At first blush, failure to meet an abolished/nonexistent duty of due care hardly seems relevant, logically if not legally. But in any event, the passage of § 298 abrogated precedent like Broadcom with regard to failure to obtain advice of counsel (or to present such a defense).[xxxv] But if the duty of due care only ever pertained to advice of counsel, then its abrogation (by statute or case law) might have left intact some separate due inquiry obligation under the second Read factor.[xxxvi]
Tending to complicate matters here are cases reaching conclusions plainly contrary to § 298, or reaching conclusions as to the boundaries and implications of that section without meaningful explanation. For instance, one district court ruled that “failure to produce . . . an opinion for trial can be considered as a factor in the jury’s determination of willfulness.”[xxxvii] Astoundingly, that court discussed old cases without any reference to their abrogation, and its ruling ended up permitting use of statutorily barred evidence for willfulness.[xxxviii] Moreover, a nonprecedential Federal Circuit decision discussed the second Read factor and found that a lack of investigation of asserted patents provided some evidence of willfulness, reaching that conclusion without discussing legal relevance limits under § 298.[xxxix]
Justice Breyer’s concurrence in Halo suggested that a nonlawyer analysis of an asserted patent might be enough to show a lack of willfulness,[xl] though the majority opinion was silent about that scenario. But that very issue came up in a district court case that held a willfulness verdict to be supported by evidence that “years of lucrative infringing sales [occurred] after failing to respond to the . . . licensing letter with a minimally adequate analysis of whether a license would be necessary,” which the court said was not prohibited by § 298 because the jury was instructed to disregard such matters, although the accused did try to present evidence of a nonlawyer invalidity analysis that the court excluded at trial.[xli] This illustrates the problem of courts too often suggesting what is in effect an adverse inference in jury instructions and then trying to immediately unring the bell by stating that no adverse inference of willfulness is permitted.
Yet a contradiction often remains. A more defensible formulation is that a jury’s inferences of knowledge of the asserted patent and of infringement can support a willfulness finding in the absence of countervailing evidence. That is, an accused infringer simply runs a greater risk of a willfulness finding if no advice of counsel defense or the like is pursued to rebut willfulness allegations because a jury can properly infer minimally sufficient knowledge and intent even in the absence of direct evidence on those points, and this does not require going so far as to assign any probative value to a failure to act. There is an important difference between willfulness being inferred from unrebutted circumstantial evidence and the failure to act (e.g., to investigate or seek legal advice) itself being treated as positive evidence of willfulness.
It is fair to distinguish the possibility of the accused making a nonlawyer analysis or inquiry defense to a charge of willfulness from an affirmative duty to do so. On its face, § 298 bars patentees from arguing about failures to obtain or present “advice of counsel” evidence.[xlii] But nothing in the literal text of § 298 bars evidence of a failure to conduct a lay investigation of an affirmative claim of infringement. Yet excluding evidence of nonlawyer investigations or analyses by the accused runs against Justice Breyer’s Halo concurrence, if not also the implicit framework of § 298.
In these senses, the question of what evidence is relevant and what, if any, quasi “duty of due care” investigation/analysis requirement remains under the second Read factor becomes significant. While cases have relied on investigative failures to support willfulness, the reasoning and justifications for such conclusions are often shaky at best or simply stated in a confusing manner. Courts will need to sort this out more definitively. But, for their part, patent litigation counsel need to be more consciously aware of these issues so they can be raised and argued when appropriate.
Key Takeaways
Post-Halo, the Federal Circuit applies a two-step process to claims for enhanced patent infringement damages under § 284: willfulness is initially a question for the finder of fact, and then subsequent enhancement, if any, is at the court’s discretion.
Failure to obtain or present an opinion of counsel cannot be used to prove willfulness, though obtaining an opinion can still be valuable to rebut charges of willful infringement; however, the value or necessity of nonattorney patent infringement and validity investigations is not yet clear.
“Willful blindness” has been accepted by many district courts as a willfulness theory, but at the outset it requires plausible pleadings about the accused’s subjective belief that there was a high probability that the asserted patent both existed and was infringed and that the accused took deliberate actions to avoid learning of those facts; “no patent review” policies may or may not meet all of those requirements.
District courts are divided over whether willfulness can be plausibly supported by a failure to monitor or investigate a patent family after learning about an unasserted patent in that family (in the absence of affirmative avoidance of facts akin to willful blindness).
Relevance limits under § 298 have often been overlooked by courts but should be considered for evidentiary objections and motion practice.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
[ii]. Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 1389–90 (Fed. Cir. 1983) (“Where . . . a potential infringer has actual notice of another’s patent rights, he has an affirmative duty to exercise due care to determine whether or not he is infringing,” including “the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity.”).
[iii]. Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1345–46 (Fed. Cir. 2004) (en banc) (“Although there continues to be ‘an affirmative duty of due care to avoid infringement of the known patent rights of others,’ the failure to obtain an exculpatory opinion of counsel shall no longer provide an adverse inference or evidentiary presumption that such an opinion would have been unfavorable.” (citation omitted)).
[xiii]. WBIP, 829 F.3d at 1341; see alsoSRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1310 n.6 (Fed. Cir. 2019) (when willfulness began is a factual issue).
[xvi]. But questions arise where the Federal Circuit appears to suggest that certain levels of intent can support willfulness but not enhanced damages, which seems contrary to Halo. SeeSRI Int’l, Inc. v. Cisco Sys., Inc., 14 F.4th 1323, 1329–30 (Fed. Cir. 2021); see also Austen Zuege, “The Federal Circuit’s Standard for Enhanced Damages,”blue over gray (Oct. 12, 2021). This apparent discrepancy might allow courts to moot a jury’s willfulness finding. SeeSchwendimann v. Arkwright Advanced Coating, Inc., No. 11-cv-820, slip. op. at 50 (D. Minn. July 30, 2018).
[xix]. Global-Tech, 563 U.S. at 769–70; Motiva, 408 F. Supp. 3d at 837 (“By definition, willful avoidance requires more than mere recklessness—and Halo holds that recklessness alone is enough to show willful infringement.”).
[xx]. Bos. Sci., 415 F. Supp. 3d at 494–95; Nonend Inventions, N.V. v. Apple, Inc., No. 2:15-cv-466, 2016 WL 1253740, at *3 (E.D. Tex. Mar. 11, 2016), adopted, No. 2:15-cv-466, 2016 WL 1244973 (E.D. Tex. Mar. 30, 2016).
[xxiii]. CompareVasudevan Software, Inc. v. TIBCO Software Inc., No. C 11-06638, 2012 WL 1831543, at *3 (N.D. Cal. May 18, 2012) (“requisite knowledge of the patent allegedly infringed simply cannot be inferred from mere knowledge of other patents,” such as “the [parent] patent, or, more generally, [the plaintiff’s] ‘patent portfolio’”), andMaxell, Ltd. v. Apple Inc., No. 5:19-cv-00036, slip op. at 9-10 (E.D. Tex. Oct. 23, 2019) (dismissing willfulness allegation based only on knowledge of application and not ultimately issued patent or knowledge of allowance of application), withSIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., No. 1:18-cv-05427, slip op. at 7–9 (S.D.N.Y. Aug. 29, 2019) (rejecting Vasudevan), andOxygenator Water Techs., Inc. v. Tennant Co., No. 20-cv-358, slip op. at 8–13 (D. Minn. Aug. 7, 2020), andSiOnyx, LLC v. Hamamatsu Photonics K.K., 330 F. Supp. 3d 574, 609 (D. Mass. 2018).
[xxiv]. See, e.g., Schwendimann, No. 11-cv-820, slip. op. at 42 (duty of due care remains abrogated); Biedermann Techs. GmbH & Co. KG v. K2M, Inc., 528 F. Supp. 3d 407, 429 n.17 (E.D. Va. 2021) (noting abrogation issues and not intending to impose duty of due care; allegations were similar to willful blindness).
[xxv]. E.g., Oxygenator Water Techs., No. 20-cv-358, slip op. at 8–13 (passing over willful blindness to find failure to monitor/investigate willfulness theory plausible); Meridian Mfg., Inc. v. C & B Mfg., Inc., 340 F. Supp. 3d 808, 844 (N.D. Iowa 2018). But seeHalo, 136 S. Ct. at 1936 (Breyer, J., concurring) (“‘[W]illful misconduct’ do[es] not mean that a court may award enhanced damages simply because the evidence shows that the infringer knew about the patent and nothing more.”).
[xxxii]. See id. In contrast, enhanced damages were affirmed where the infringer delayed obtaining advice of counsel for years. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1371 (Fed. Cir. 2017). There, legal advice was (eventually) obtained and privilege waived, but the delay was held against the infringer.
[xxxiv]. Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 699 (Fed. Cir. 2008) (holding that “failure to procure . . . an opinion [of counsel] may be probative of [subjective] intent”).
[xxxvi]. SeeSRI Int’l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1464–65 (Fed. Cir. 1997) (“[T]he primary consideration is whether the infringer, acting in good faith and upon due inquiry, had sound reason to believe that it had the right to act in the manner that was found to be infringing.” (emphasis added)). Broadcom is still cited without mentioning its statutory abrogation. Omega Pats., 920 F.3d at 1352–53. Compare Broadcom, 543 F.3d at 699, with35 U.S.C. § 298.
[xxxix]. WCM Inds., Inc. v. IPS Corp., 721 F. App’x 959, 970, 970 n.4 (Fed. Cir. 2018) (nonprecedential) (questioning cases suggesting no duty to predict what claims will issue from a pending patent applicable because prosecution histories are now normally publicly available); see alsoSIMO Holdings, No. 1:18-cv-05427, slip. op. at 5–7; 35 U.S.C. §§ 154(d), 284.
[xl]. Halo, 136 S. Ct. at 1936 (Breyer, J., concurring); see alsoSchwendimann, No. 11-cv-820, slip. op. at 42–43; Idenix Pharms. LLC v. Gilead Scis., Inc., 271 F. Supp. 3d 694, 699 (D. Del. 2017). But seeSSL Servs., LLC v. Citrix Sys., Inc., 769 F.3d 1073, 1092 (Fed. Cir. 2014) (excluding lay testimony of belief in invalidity and noninfringement to rebut willfulness).
Is it possible for a U.S. design patent claim to include a negative limitation? It does not appear that courts have explicitly addressed this question. That is partly due to emphasis on design patent claims and infringement analyses revolving around the design as a whole, which can lead to rather conclusory decisions. But the question posed here is whether a claimed ornamental design as a whole can contain within it one or more “negative limitations” that effectively indicate the absence of some ornamental aspect, as opposed to indicating the positive (or affirmative) presence of an ornamental aspect. Certain past cases have touched on similar issues without specific reference to “negative limitations” in the sense that term is used with regard to utility patent claims.
Consider a design patent claim that shows as part of the overall ornamental design a flat surface, that is, a solid planar surface that is plain and uninterrupted. Does such a depiction include a negative limitation of sorts that excludes the presence of ornamentation on the surface? That is, does it give rise to a potentially significant overall difference when comparing a perforated surface or a surface that has substantial non-planar texturizing surface ornamentation? The same questions might arise, for instance, when a claimed design depicts only a single element (such as a single rounded corner, single support bar, single hole, etc.) but the accused product includes more than one of those elements.
In general, design patent infringement analysis involves two steps: (1) claim construction and (2) comparison of the properly construed claim to the accused product. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). Theoretically, at least, questions about “negative limitations” in design patents could potentially arise in either of those two steps.
While, certainly, a jury can always reach an ultimate infringing/non-infringing conclusion, in the binary sense, based on the particular and specific facts at hand in any given case. But the topics at hand here are how courts should treat the legal issues surrounding how a finder of fact might be presented with design patent infringement questions where negative limitation issues are present, and also how courts making dismissal (Rule 12(b)(6)), summary judgment, judgment on the pleadings, judgment as a matter of law (JMOL), or appeal decisions can explain their reasoning under the ordinary observer test when negative limitations may be present.
Negative Limitations in Design Claim Construction
Design patent infringement analysis begins with claim construction. Although claim construction is also the first step in utility patent infringement analysis, design patent claim construction differs from that for utility patents in some important ways.
A patentable design “gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form.” Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 525 (1871); see also Samsung Elecs. Co., Ltd. v. Apple Inc., 580 U.S. ___, 137 S. Ct. 429, 432-33 (2016). This means design patent claim construction must be adapted to the pictorial setting. Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1302 (Fed. Cir. 2010). In that sense, the Federal Circuit has said that “[d]epictions of the claimed design in words can easily distract from the proper infringement analysis of the ornamental patterns and drawings.” Id.; see also Dobson v. Dornan, 118 U.S. 10, 14 (1886) (a claimed design “is better represented by the photographic illustration than it could be by any description, and a description would probably not be intelligible without the illustration.”).
The Federal Circuit has cautioned that detailed verbal claim constructions increase “the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008) (en banc). For such reasons, the level of detail to be used in describing the claimed design is a matter within a court’s discretion, and a court is not obligated to issue a detailed verbal description of the design if it would not be helpful. Id. at 679-80. Yet a court may use claim construction to help guide the fact finder through issues that bear on claim scope. Id. at 680.
Although not always at issue in every case, design patent claim construction can address prosecution history estoppel and prosecution history disclaimer. See Egyptian Goddess, 543 F.3d at 680. In general, the doctrine of prosecution history estoppel prevents a patentee from “recaptur[ing] in an infringement action the very subject matter surrendered as a condition of receiving the patent.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 734 (2002). It requires that “the claims of a patent be interpreted in light of the proceedings in the [US]PTO during the application process.” Id. at 733. The Federal Circuit has specifically held that prosecution history estoppel applies to design patents too. Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014).
However, for design patents, unlike with utility patents, “the concepts of literal infringement and equivalents infringement are intertwined.” Id. at 700-01. Because it is the drawings of the design patent that provide the description of the invention, courts “look at the requisite drawings in design patents to determine whether a surrender has occurred.” Id. at 702. Estoppel arises when a narrowing amendment is made to satisfy any requirement to secure the grant of the patent, including amendments to avoid prior art or resulting from a restriction requirement. Id. at 703-04; see also Advantek Marketing Inc. v. Shanghai Walk-Long Tools Co., 898 F.3d 1210, 1216-17 (Fed. Cir. 2018).
In the Pacific Coast Marine Windshields case, a design application (for U.S. Des. Pat. No. D555,070) originally included drawings depicting—and claiming—multiple embodiments of a boat windshield. As reproduced below, the various originally-claimed embodiments showed the claimed windshield design with different vent hole configurations and also showed claimed designs that included and excluded a hatch on the front of the windshield. The examiner issued a five-way restriction requirement, identifying five distinct groups of designs as windshields with:
four circular holes and a hatch (FIG. 1);
four circular or square holes and no hatch (FIGS. 7 and 12);
no holes and a hatch (FIG. 8);
no holes and no hatch (FIG. 9); and
two oval or rectangular holes and a hatch (FIGS. 10 and 11).
Grid of selected original figures from the application for Des. Pat. No. D555,070
In that sense, the examiner indicated that many of the different embodiments (but not all of them) represented different design inventions. In response, the patentee removed alternate embodiments, thus deleting those alternate embodiments from the scope of the claim. That prosecution history had significant implications to the scope of the claim in the granted design patent before the court (D555,070). Incidentally, the patentee chose to file only one subsequent divisional application to the “no holes and a hatch” embodiment (that became U.S. Des. Pat. No. D569,782), apparently without pursuing any other of the original alternate embodiments—though a continuation application (that became U.S. Des. Pat. No. D593,024) based off the divisional was also later filed for a partial design to only the vertical corner posts with no vent holes (with the windscreen portions unclaimed, thus potentially avoiding hatch vs. no hatch questions).
Malibu Boats, LLC’s accused product (left) and FIG. 1 of U.S. Pat. No. D555,070 (right)
Noting that treatises and prior district court decisions had said similar things in the past, the Federal Circuit ruled that surrender of claims to the alternate designs was for reasons of patentability that caused prosecution history estoppel to attach. Pac. Coast Marine Windshields, 739 F.3d at 702-04. However, because the accused windshield product’s design had three vent holes (see above) but the patented design had four vent holes (see FIG. 1 above) and the surrendered embodiments/designs had only two vent holes (see original FIGS. 10 and 11 above), summary judgment of non-infringement was reversed and the case was remanded to the district court for further proceedings. Id. at 704-05. In other words, without reaching a definitive infringement/non-infringement decision, the patentee was barred from arguing that the design patent’s claim covered a two-hole design (or any other surrendered embodiments) but was still able to argue that a three-hole design might be covered because there was no surrendered three-hole embodiment in the original drawings. (The Federal Circuit decision did not address potential differences in the horizontal/angled frame or trim aspects of the accused design as part of the overall appearance analysis). After remand, and denial of subsequent summary judgment cross motions (which included inventorship disputes, and non-patent issues), the parties eventually settled.
Generally similar negative limitation issues have arisen in utility patent cases. For example, the Spine Solutions case involved questions of claim construction and prosecution history estoppel for a utility patent. Claim 1 of the patent in question recited “a single anchor on each of the upper surface of the upper part and the lower surface of the lower part . . . .” The relevant claim construction implicitly regarded the “single anchor” recitation as including a negative limitation, that is, requiring one anchor having the recited characteristics but excluding the presence of more than one anchor. There was no infringement by the accused device, which had two anchors rather than a “single” anchor as claimed. The Federal Circuit reasoned as follows:
“We agree with [the accused infringer] Medtronic that the court erred in determining that [the accused] O-Maverick [device] literally infringes claims 1 and 2. The [district] court construed ‘single anchor’ to mean, in relevant part, that ‘[t]he upper and lower surfaces of the implant each have one anchor having the characteristics recited in the last paragraph of [claim 1].’ Claim Construction Order, 2008 WL 4831770, at *14, 2008 U.S. Dist. LEXIS 116648, at *43 (emphasis added). A simple observation of [the accused] O-Maverick [device] confirms that the implant has two anchors on each of the upper and lower pieces, not one. The anchors are separated by a one-millimeter gap that extends all the way to the base of the implant; at no point are the two anchors joined or connected in any way. O-Maverick clearly has two anchors on each piece, not a ‘single anchor’ as recited by claims 1 and 2. Therefore, we hold as a matter of law that [the accused] O-Maverick [device] does not literally infringe claims 1 and 2.
“During prosecution, applicants expressly distinguished the claimed invention over the ‘477 patent by asserting that ‘a reference disclosing two anchors does not disclose a device affirmatively claiming a single anchor… reciting a negative limitation in the form of a single element is not disclosed by prior art which teaches more than one element.’ J.A. 17524. This is a clear disclaimer of claim scope, and prosecution history estoppel therefore bars [the patentee] SSI from arguing that a two-anchor device is equivalent to the claimed implant. Because we hold that [the accused] O-Maverick [device] is a two-anchor device, SSI cannot argue that O-Maverick infringes claims 1 and 2 under the doctrine of equivalents.”
What all these cases emphasize is that negative limitations can be at issue for design patent claim constructions, just as in utility patent cases. Prosecution disclaimer or prosecution estoppel issues resulting from arguments or amendments to a design application are especially relevant here. The Pacific Coast Marine Windshields case illustrates how those issues should be assessed as part of a design claim construction, if and when they arise. Other cases also indicated how this can be significant with respect to words in the design patent claim — such as words in the title that restrict the scope of the claim to a particular article of manufacture. Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019); In re SurgiSil, L.L.P., No. 2020-1940 (Fed. Cir. Oct. 4, 2021). It is possible a design patent might include words like “individual” in the title that could include a negative limitation.
What is less certain for design patent claim construction is what role, if any, negative limitations have when the feature in question is something that appears in a drawing but there was no prosecution history disclaimer or estoppel. Because detailed design claim constructions that translate visual depictions into words are disfavored, it would not be appropriate in most situations to single out a particular visual element and explicitly construe it as containing a negative limitation (in the absence of a disclaimer or estoppel). That would depart from the context of the ordinary observer analysis and the requisite visual analysis of the overall appearance of the ornamental design.
Yet there may be instances where a negative limitation appears in relation to functional features, for example. The Federal Circuit has held that a claim construction may help the fact finder “distinguish[] between those features of the claimed design that are ornamental and those that are purely functional.” Egyptian Goddess, 543 F.3d at 680 (citing OddzOn Prods., 122 F.3d at 1405). A design may contain both functional and ornamental elements, even though the scope of a design patent claim “must be limited to the ornamental aspects of the design.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333 (Fed. Cir. 2015). “Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.” OddzOn Prods., 122 F.3d at 1405; accord Ethicon Endo-Surgery, Inc., 796 F.3d at 1333. This ensures that the claim is limited to the ornamental aspects of the design, and does not extend to “the broader general design concept.” OddzOn Prods., Inc., 122 F.3d at 1405; see also Read Corp. v. Portec, Inc., 970 F.2d 816, 825 (Fed. Cir. 1992) (“[w]here . . . a design is composed of functional as well as ornamental features, to prove infringement a patent owner must establish that an ordinary person would be deceived by reason of the common features in the claimed and accused designs which are ornamental.”). But a construction of design features that are only partly functional, with some at least minimal ornamentation, must not entirely eliminate whole aspects from the scope of the claim, even as the functional elements limit and narrow the claim scope. See Sport Dimension, Inc. v. Coleman Co., Inc., 820 F.3d 1316, 1322-23 (Fed. Cir. 2016); Apple Inc. v. Samsung Elecs. Co., Ltd., 786 F.3d 983, 998-99 (Fed. Cir. 2015).
Negative Limitations in Comparisons Between Claimed Design and Accused Product
Following claim construction, if any, the design patent’s claim as construed is compared to the allegedly infringing products. Elmer, 67 F.3d at 1577. When considering infringement of a design patent, the “ordinary observer” test is the sole test for determining if infringement has occurred. Egyptian Goddess, 543 F.3d at 678 (rejecting the use of a separate “point of novelty” test); Crocs, 598 F.3d at 1303. Under the ordinary observer test, infringement occurs:
“if, 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.”
Gorham, 81 U.S. at 528; Egyptian Goddess, 543 F.3d at 670-71.
This test has been codified in the patent laws, which provide as follows:
“Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.”
35 U.S.C. § 289
Thus, as the ordinary observer test is sometimes described, infringement is not found unless the accused article embodies the patented design or any colorable imitation of it. Egyptian Goddess, 543 F.3d at 678 (citations omitted). Though recall that for design patents “the concepts of literal infringement and equivalents infringement are intertwined.” Pac. Coast Marine Windshields, 739 F.3d at 700-01.
Against that backdrop, the question of potential negative limitations can arise in the context of whether logos (or the like) present on the accused product can or should be considered when comparing it to the design patent claim to determine if there is infringement.
It is necessary to compare the claimed design (as construed) as a whole to accused product. Ethicon Endo‐Surgery, 796 F.3d at 1335; Crocs, 598 F.3d at 1302-06. This is to say that in the “ordinary observer” analysis, the patented design is viewed in its entirety, as it is claimed. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed. Cir. 1993). “[A]ll of the ornamental features illustrated in the figures must be considered in evaluating design patent infringement.” Contessa Food Prods., 282 F.3d at 1378. “A patented design is defined by the drawings in the patent, not just by one feature of the claimed design.” KeyStone Retaining Wall Sys., 997 F.2d at 1450. This means the comparison of the claimed design (as construed) to the accused product must generally include all of the patent figures in comparison, and it cannot merely compare separate elements in isolation or involve serial element-by-element comparison.
Yet an infringement analysis that recites significant differences between the ornamental features of the claimed and accused designs is still acceptable if, in determining infringement, that analysis still mainly focuses on whether an ordinary observer would be deceived into thinking that the accused product’s design was the same as the patented design. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295-96 (Fed. Cir. 2010). It is in that sense that negative limitations can be used to help articulate significant differences from the standpoint of an ordinary observer.
Along those lines, the Federal Circuit has held that the finder of fact can consider “an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one.” Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119, 1131 (Fed. Cir. 2019). In a subsequent August 2021 trial under that guidance, a jury found no infringement. Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., No. 3:17-cv-01781 (S.D. Cal. Aug. 6, 2021) (jury verdict of non-infringement). The parties subsequently cross appealed.
In Columbia, the patent owner sometimes made a comparison of only a selected portion of the claimed design to the accused product in briefing. This had the effect of broadening the asserted claim. For instance, in the first comparative example below for district court summary judgment briefing, note how the claimed design uses broken lines in FIG. 1 to show that a boundary exists but is unclaimed (seeMPEP § 1503.02(III) (9th Ed., Rev. 10.2019, June 2020)). But the claimed design of FIG. 1 includes a generally sinusoidal wave pattern with four full crests and five full troughs that appear uninterrupted between the broken line boundaries; whereas in a comparison table used in briefing only part of the claim with merely three full (and uninterrupted) crests and troughs was reproduced as allegedly being the “Patented Design”. And in the second example below, from appellate briefing, note how FIG. 2 is used by the patentee for comparison despite the asserted design patent stating that “FIG. 2 is an enlarged elevational view thereof, taken from any area in the design” (that is, FIG. 2 merely shows an enlargement of a portion [with]in the claimed design but does not show the entire claimed design). If we analogize this to the utility patent context, it is like comparing a selected claim limitation to the accused product in isolation without addressing one or more additional limitations present in the claim. The significance of the accused product’s interruption (with repeating logos) in comparison to the claimed uninterrupted design was a key issue in the case including its appeals. So the question of what constitutes the full scope of the claimed design is foundational to what is or is not interrupted in the accused product.
FIG. 1 of U.S. Des. Pat. No. D657,093 (left) and Portion of Plaintiff Columbia’s March 7, 2016 Motion for Partial Summary Judgment (right)Portion of U.S. Des. Pat. No. D657,093 (left) and Portion of Plaintiff Columbia’s September 18, 2018 Appellate Response and Reply Brief Showing FIG. 2 of U.S. Des. Pat. No. D657,093 Overlaid on Photo of Accused Product (right)
The district court declined to construe the design patent claim with a detailed verbal description in its Markman order, or to provide any other construction or guidance about design patent conventions, but instead later provided jury instructions that stated:
“A design patent’s claim defines what is covered by the patent. The claim is typically represented by illustrations. It is permissible to illustrate more than one embodiment of a design in a single design patent application. Each design patent contains multiple drawings to illustrate the claimed design.
The scope of the claim encompasses the design’s visual appearance as a whole. It does not cover a general design concept and is not limited to isolated features of the drawings. An inventor’s subjective intent is not relevant to the scope of the claimed design”
Quote from Jury Instruction No. 9 (as filed Aug. 6, 2021)
That jury instruction (No. 9) was largely generic. It could have been issued in any design patent case without changing a word. Neither the jury instruction nor the Markman order specifically addressed the proper interpretation of the language describing FIG. 2 quoted above, which is part of the claim. Most significantly, the jury was not instructed to disregard the presence of logos on the accused product (as Columbia had sought). But, additionally, the jury was not instructed about whether the asserted design patent actually included multiple embodiments or whether certain drawings showed the same design or merely incomplete portions of it. That meant that, in the Columbia case, there was no express “negative limitation” claim construction. Instead, everything came down to the comparison of the overall appearances.
“To determine infringement of a design patent, you must compare the overall appearances of the accused design to the Design Patent. The accused design is Seirus’s HeatWave fabric. If you find by a preponderance of the evidence that the overall appearance of the accused design is substantially the same as the overall appearance of the Design Patent, you must find that the accused design infringed the Design Patent.
Two designs are substantially the same if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, the resemblance between the two designs is such as to deceive an ordinary observer, inducing him to purchase one supposing it to be the other. You do not need, however, to find that any purchasers were actually deceived or confused by the appearance of the accused products. You should consider any perceived similarities or differences between the patented and accused designs. Minor differences should not prevent a finding of infringement.”
Quote from Jury Instruction No. 10 (as filed Aug. 6, 2021)
The jury instruction (No. 10) regarding the comparison step did mention the accused product by name. But otherwise that instruction is also fairly generic. Jury instructions nos. 11-13 also pertained to design-patent-specific issues, including comments about the proper use of prior art in instruction no. 11.
The district court could have provided further claim construction guidance. But it chose not to. As already noted, the jury held that the patented design was not infringed. On the next appeal, there will surely be a dispute over the ultimate verdict of non-infringement of the design patent, but also perhaps about the mostly generic jury instructions related to design patent claim construction and infringement analysis and how those impact any “negative limitations” in the design patent claim. Though, interestingly, at the district court neither party really argued this point regarding the proposed final jury instructions for the August 2021 trial (most of the arguments over those instructions instead centered around what could be ignored, proper consideration of marketing materials evidence, how functionality should be referenced if at all, and the relevance and proper role of alleged prior art).
Conclusion
The appropriate way to address “negative limitations” in design patent claims is: first, to address in claim construction any prosecution history disclaimer or prosecution history estoppel issues that might give rise to recapture issues around such “negative limitations”, as well as any relevant interpretations of the text of the claim (including the title and description) that might do the same; and, second, to articulate the way design features affirmatively present in the accused design represent significant differences from such “negative limitations” in the claimed design in an analysis that still mainly focuses on whether an ordinary observer would be deceived into thinking that the accused product’s design was the same as the patented design overall.
The first aspect might not be relevant in all cases. Those questions will be highly dependent on the content of the asserted design patent claim and the prosecution history. But the second aspect could potentially apply whenever the asserted design patent appears to recite, in part, a “negative limitation”. This second part might impact jury instructions, as well as the way a case is argued to the finder of fact. It could also impact a pre-suit opinion of counsel analysis. Both factors might come up as part of dismissal, summary judgment, judgment on the pleadings, and/or JMOL motions, as well as in appeals.
January 2022
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
At the beginning of 2022, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.
Patents
“DOCX” filing format deadline extended
The deadline for the implementation of a surcharge for non-DOCX patent application filings has been extended until January 1, 2023. In recent years, most U.S. patent applications have been filed electronically in PDF format. DOCX-format filings are currently possible but non-DOCX PDF-format filings are still permitted without any surcharge. The non-DOCX surcharge will eventually be $400/$200/$100 for large/small/micro entities. Note that the non-DOCX surcharge will not apply to PCT national phase entries into the USA. The applicability of the non-DOCX surcharge to U.S. applications filed in a language other than English is still rather unclear (it is not clear if a DOCX copy of only the English translation, only the non-English original, or both the original and translation is required to avoid the surcharge).
In general, the greatest concerns about DOCX format have to do with rendering of complex application content, such as embedded mathematical equations created with a word processing program’s equation editing functionality, which may not render as the applicant intended at the USPTO side. The official reason given for the implementation delay is to “provide the public an opportunity to more fully comprehend the nature of, and prepare to comply with, the DOCX format[.]” But while the DOCX format is an administrative convenience for the USPTO, its mandated use is a more of a burden than a benefit for applicants. The need for applicants and their counsel to review and correct potential USPTO-side DOCX rendering errors (which may occur more frequently than with certain PDF-format filings) may make PDF-format filing and payment of the non-DOCX surcharge preferable in some situations. Though for applications containing only simple text, without complex or unusual formatting or embedded equations (other than equations inserted as images), DOCX-format filing should not pose any major problems.
Digital-only patents
Starting sometime in 2022, the USPTO will cease issuing paper patents and will issue digital patents instead. However, paper “presentation copies” (also called ribbon copies) of patents (on heavy paper with an embossed gold seal and the USPTO Director’s signature) will still be available upon request for a $25 (US) official fee per copy. The USPTO says that digital patent issuance will speed up the process of issuance after payment of the issue fee, with a target of one week to issuance. This will shorten the time available to file a divisional or continuation patent application, which must be filed no later than the day of issuance of the parent patent. Though it has always been—and will remain—a recommended best practice to file any desired divisional/continuation application no later than the date of issue fee payment.
Bilateral exchange of certified priority documents with EPO ending
The USPTO’s bilateral electronic priority document exchange (PDX) program with the European Patent Office (EPO) is ending. For any U.S. applications filed on or after January 01, 2022 with a priority claim to an earlier EP application, a WIPO Digital Access Service (DAS) code will need to be provided in order to electronically retrieve a certified copy through PDX. This will require registering the EP application with the WIPO DAS exchange. This change will not affect PCT national phase entries into the USA where the EP priority document is made available under PCT Rule 17.
Starting December 1, 2022, the time to respond to trademark office actions (under 37 C.F.R. § 2.62(a)) will be shortened to three (3) months. A single three-month extension of time to respond can be requested, which will carry an official fee of $125 (US). The extension must be affirmatively requested within the original three-month period. However, the shortened response periods will not apply to Madrid extensions to the USA. For refusals in Madrid extension cases (§66), the applicant will still have a full six-month response period available without paying any extension fees.
Digital-only registration certificates
Starting in spring 2022 the USPTO will cease issuing paper trademark registration certificates and will issue digital certificates instead. [UPDATE: the USPTO began issuing only electronic registration certificates on May 24, 2022.] However, paper “presentation copy” trademark registration certificates (on heavy paper with an embossed gold foil seal, the name(s) of the owner(s), the mark, bibliographic data, and the classes of goods and/or services) will still be available upon request for a $25 (US) official fee per copy. Registrants who filed an initial trademark application before the implementation date (a date that is not yet fixed) will be able to order presentation copies with no official fee. Additionally, certified copies of U.S. trademark registration certificates with current title and status information are also available with payment of an official fee, currently $30 (US).
Filer Identify Verification
[UPDATE: the USPTO has postponed the deadline for filer identity verification to August 6, 2022.] By April 9, 2022, persons filing trademark applications, responses, and the like must complete identity verification in order to electronically file with the USPTO. These identity verification procedures will be available starting January 8, 2022.
New expungement and reexamination proceedings
Two new proceedings are available for an existing trademark registration to be challenged. Both of these new proceedings are conducted on an ex parte basis. That is, a challenger files a petition to request expungement or reexamination and, if granted, the rest of the proceeding is conducted only between the USPTO and the registrant in a manner similar to original examination. Unlike traditional cancellation (or opposition) proceedings, after institution of an expungement or reexamination proceeding, the challenger cannot substantively participate. Summaries of the two new proceedings follow, but more details about applicable procedures can be found in the USPTO Examination Guide 1-21. In addition to the two new types of proceedings, expungement is also available as a new ground for a traditional cancellation proceeding after three years of registration (15 U.S.C. § 1064(6)).
Expungement proceedings:Any party may request cancellation of some or all of the goods or services in a registration because the registrant never used the mark in commerce with those goods or services. The official filing fee for an expungement proceeding is currently $400 (US) per class. An expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, there is currently an extended expungement filing period. Until December 27, 2023, expungement may be requested for any registration at least three (3) years old, regardless of the ten-year limit. In other words, the ten-year time limit for expungement proceeding requests will only go into effect after December 27, 2023. Expungement proceedings are available for all registrations but will be especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required to initially obtain a U.S. registration.
Reexamination proceeding: Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before either (1) the application filing date (when the underlying application was initially filed based on use of the trademark in commerce under §1(a)) or (2) the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired (when the underlying application was filed with an intent-to-use basis under §1(b)). Reexamination proceedings are available for registrations under 15 U.S.C. §1051 (§1) but are not available for marks registered under the Paris Convention (§44) or the Madrid protocol (§66). The official filing fee for a reexamination proceeding is currently $400 (US) per class. Reexamination must be requested within the first five (5) years after registration.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
The Scope and Limits of Trade Dress and Patent Protection in Product Shapes: Food Product Case Studies
Intellectual property (IP) protection for product configurations of comestibles, confections, foodstuffs, and the like have been a matter of dispute in courts for well over a century. A variety of distinct IP rights may be invoked in this context, among them design patents and trade dress (either as a registered or unregistered trademark). Courts have grappled with the limits of such IP rights, seeking to prevent end-runs around the expiration of patent and copyright rights that the U.S. Constitution restricts to only limited times.[i] Such limits on IP rights embody long-standing Anglo-American legal principles in place since the Statute of Monopolies curbed the English Crown’s practice of granting “odious” monopolies over common commodities to raise funds or bestow favor.[ii] Cases up to the present highlight continued aggressive assertions of trade dress rights by foodstuff manufacturers—coupled with pushback by courts to deny trade dress rights in purely functional product configurations.
A number of important historical decisions observed the tendency for assertions of trade dress in (food) product configurations/shapes/forms/designs—these terms being used somewhat interchangeably—to inappropriately extend monopoly protections after a patent expired. Judge Learned Hand authored Shredded Wheat Co. v. Humphrey Cornell Co., which dealt with alleged trade dress infringement of the shape of shredded wheat biscuits after the expiration of a design patent to the same biscuit shape.[iii] He wrote that “the plaintiff’s formal dedication of the design [upon expiration of U.S. Des. Pat. No. 24,688] is conclusive reason against any injunction based upon the exclusive right to that form, however necessary the plaintiff may find it for its protection.”[iv]
Later, the Supreme Court weighed in on a dispute between Kellogg and Nabisco, finding the pillow shape of a shredded wheat biscuit to be functional because “the cost of the biscuit would be increased and its high quality lessened if some other form were substituted for the pillow-shape.”[v] The Court stated,
“The plaintiff has not the exclusive right to sell shredded wheat in the form of a pillow-shaped biscuit — the form in which the article became known to the public. That is the form in which shredded wheat was made under the basic [utility] patent [U.S. Pat. No. 548,086]. The patented machines used were designed to produce only the pillow-shaped biscuits. And a design patent [U.S. Des. Pat. No. 24,688] was taken out to cover the pillow-shaped form. Hence, upon expiration of the patents the form . . . was dedicated to the public.”[vi]
Kellogg has remained the touchstone for cases on the limits of trade dress protection, and not just for foodstuffs. Subsequent decisions have elaborated on the non-functionality doctrine without changing the basic framework.[vii]
In a more modern case, Sweet Street Desserts, a “Blossom Design” for a round, single-serving, fruit-filled pastry with six folds or petals of upturned dough was held to be functional and, accordingly, unprotectable as trade dress because the product’s size, shape, and six folds or petals of upturned dough were all essential to the product’s ability to function as a single-serving, fruit-filled dessert pastry.[viii] Only incidental, arbitrary, or ornamental product features that identify the product’s source are protectable as trade dress. Chudleigh’s trade dress Reg. No. 2,262,208 was cancelled.[ix]
In Ezaki Glico v. Lotte, the non-functionality requirement was assessed in connection with Ezaki Glico’s POCKY® treats—thin, rod- or stick-shaped cookies partially coated in chocolate (with optional nuts)—and Lotte’s competing PEPERO® treats.[x]
Ezaki Glico’s trade dress Reg. Nos. 1,527,208 (left) and 2,615,119 (right)Photos of original (left) and album (right) PEPERO® treats (for scale, these are about the size of a medium-length bamboo cooking skewer)
The core dispute was how to define “functional” for product configuration trade dress. Ezaki Glico argued a narrow reading, equating “functional” with “essential.” The court disagreed, reading Supreme Court precedent to say that product configuration features need only be useful to be functional. That is, a product shape feature is “useful” and thus “functional” if the product works better in that shape, including shape features that make a product cheaper or easier to make or use. The 3rd Circuit held that a product feature being “essential to the use or purpose of the article or if it affects the cost or quality of the article”[xi] is merely one way to establish functionality.[xii] A product feature is also unprotectably functional if exclusivity would put competitors at a significant, non-reputation-related disadvantage.[xiii] The rejection of a narrow reading of the functionality doctrine echoes cases in other circuits characterizing the Supreme Court’s TrafFix case as setting forth two ways to establish functionality.[xiv] There are several ways to establish functionality that are not limited to merely “essential” product features.
Functionality in the trade dress context is commonly assessed through the following types of non-dispositive evidence, as summarized in Ezaki Glico:
“First, evidence can directly show that a feature or design makes a product work better…. Second, it is ‘strong evidence’ of functionality that a product’s marketer touts a feature’s usefulness. Third, ‘[a] utility patent is strong evidence that the features therein claimed are functional.’ Fourth, if there are only a few ways to design a product, the design is functional. But the converse is not necessarily true: the existence of other workable designs is relevant evidence but not independently enough to make a design non-functional.”[xv]
There was evidence of practical functions of holding, eating, sharing, or packing the POCKY treats. Ezaki Glico’s internal documents showed a desire to have a portion of the stick uncoated by chocolate to serve as a handle. The court also noted how the size of the sticks allowed people to eat them without having to open their mouths wide and made it possible to place many sticks in a package. Ads for POCKY treats also emphasized the same useful features. Ezaki Glico proffered nine examples of partially chocolate-coated treats that do not look like POCKY treats, but the court found that evidence insufficient to avoid the conclusion that every aspect of POCKY treats is useful.
Finally, the court concluded that Ezaki Glico’s utility patent U.S. Pat. No. 8,778,428 for a “Stick-Shaped Snack and Method for Producing the Same” was irrelevant. The court’s rationale for that conclusion, however, is rather unconvincing. The utility patent was applied for in 2007, with a 2006 Japanese priority claim, which was long after Ezaki Glico began selling POCKY treats in the U.S. in 1978, and also long after Lotte began selling the accused PEPERO treats in 1983 and the first explicit allegations of misconduct in 1993. That patent was also still in force (i.e., unexpired). The utility patent corresponded to an “ultra thin” version of POCKY treats and Ezaki Glico argued that its patent addressed only one of many embodiments covered by its trade dress.
The lower court discussed utility patent disclosures regarding stick warping formulated like a problem-solution statement[xvi]—somewhat akin to inventive step (obviousness) analyses in European patent practice. But unmentioned was how the patent’s disclosed stick holder necessarily produces a partial chocolate coating.[xvii] The 3rd Circuit’s reasoning about the irrelevance of the utility patent is superficial to the point of being mere tautology. The appellate opinion did not address Kellogg’s statement that the form in which a food article was made under an expired “basic” patent was relevant to trade dress eligibility or other circuits’ cases that deemed a prior manufacturing method patent to be relevant. Moreover, the court did not address the way mere descriptiveness of just one good bars registration of a trademark for an entire group of goods encompassing additional, different goods.[xviii] Whether a later-filed patent can ever provide grounds to cancel an earlier trade dress registration for functionality is a question the court essentially avoided deciding.
Something else not discussed in Ezaki Glico was the 3rd Circuit’s decision nearly a century ago in the Eskimo Pie case.[xix] There, the validity of U.S. Pat. No. 1,404,539 on the original ESKIMO PIE® chocolate-covered ice cream treat was at issue. The court held the utility patent invalid, reasoning with regard to claim 6 (in which the core and casing form a “substantially rectangular solid adapted to maintain its original form during handling”) that “[t]here is no invention in merely changing the shape or form of an article without changing its function except in a design patent.”[xx] The rectangular solid shape was found non-functional and therefore unable to distinguish the prior art in a utility patent claim. The lower court had already pithily reached these same conclusions:
“The gist of the invention, if there be one, is in sealing a block of ice cream in a sustaining and self-retaining casing of chocolate. A rectangular piece of ice cream is coated with chocolate…. All that the patentee does is to take a small brick of ice cream and coat it with chocolate, just as candies are coated. [In the prior art,] Val Miller took a round ball of ice cream and coated it, just as candies are coated. In one case the ice cream is round in form, and in the other case it is rectangular. In both cases there is a sustaining and self-retaining casing, sealing the core of ice cream…. There is no invention in form alone.”[xxi]
U.S. Pat. No. 1,404,539
In a fascinating Wired article from 2015, Charles Duan located correspondence with the inventor’s patent attorney and other pertinent historical information in museum archives.[xxii] Duan highlighted how the invention, if anything, was really about the particular formulation of chocolate that allowed it to work effectively as a coating on a frozen ice cream treat, while the patent contains no disclosure in that regard and its claims were intended to be preemptive.[xxiii] Invalidation of the ESKIMO PIE patent opened the door for the KLONDIKE® ice cream treat, introduced in 1928, which was later the subject of an 11th Circuit trade dress case about product packaging (as opposed to product configuration) for a wrapper with a pebbled texture, images of a polar bear and sunburst, bright coloring, and square size that, in combination, were held non-functional.[xxiv]
Courts have tended to be more lenient on (food) packaging trade dress when it comes to functionality.[xxv] This held true when the 11th Circuit later found the unregistered product design of DIPPIN’ DOTS® multi-colored flash-frozen ice cream spheres/beads to be functional and thus ineligible for trade dress protection.[xxvi] An unexpired utility patent (U.S. Pat. No. 5,126,156)—later held invalid and unenforceable[xxvii]—was specifically cited as evidence of functionality of the product design, along with judicial notice that certain colors connote ice cream flavor.[xxviii]
So, in 1929, the 3rd Circuit ruled that the configuration of an ESKIMO PIE treat was ornamental and non-functional, and therefore unpatentable in a utility patent; whereas, in 2021, the Third Circuit ruled that the configuration of a POCKY treat was functional, and therefore ineligible for trade dress protection. How can these decisions be reconciled?
The only way to square these cases is to say that “functionality” in the trade dress context means something legally different than in the patent context. So, an ice cream treat’s shape/configuration was insufficiently functional to support a utility patent claim though a cookie treat’s shape and configuration was too functional (useful) to support trade dress protection. But courts and other commentators often stop well short of explaining why “functionality” differs in these two contexts, or what specific evidence would differ—aside from the separate need to prove inherent or acquired distinctiveness to establish trade dress rights.[xxix]
The ultimate conclusions in the two cases, however, are very consistent in seeking to limit overreaching IP assertions. The functionality doctrine for trade dress has long been used to scrutinize attempts to secure a potentially perpetual trademark monopoly on product feature(s) thatconsumers desire in the product itself apart from any unique but optional source-identifying function(s) of product configuration—as well as manufacturers’ concerns about ease and cost of manufacturability. In the patent context, utility requirements at least implicitly revolve around the technological arts rather than aesthetic, saleability, and product source identification concerns—those might be called functions but they are not the type of inventive functions that are eligible for utility patent protection.
But the courts have yet to make explicit the precise role, if any, of the relevant consumer’s perspective in this analysis, which would seem to be a legitimate inquiry in the trade dress context in a way it would not be in the utility patent context, for instance. Admittedly, the “ordinary observer” test used for infringement of design patents blurs this distinction somewhat, especially given that one appeals court has held that conflation of the trademark likelihood-of-confusion test and the design patent ordinary-observer test is harmless error.[xxx] But evidence of non-reputational consumer desires, such as a consumer survey or similar expert testimony, would appear to be rather unique to product configuration trade dress considerations and in closer cases might not always be answered or rendered unnecessary by the admissions or conduct of the alleged trade dress owner.
Certainly, many trade dress product configuration cases do turn on admissions or statements (such as ads) by the owner that indicate functionality or the failure of the owner to meaningfully rebut the persuasive articulation of functionality readily observable in the product itself. Additionally, parties aggressively enforcing trade dress have often also pursued or obtained another form of protection, such as a patent, and statements made in (or during the prosecution of) a patent on the same or similar subject matter can be relevant to trade dress functionality.[xxxi] The Supreme Court has gone so far as to explicitly note that invoking trademark rights as patent rights expire is suspicious enough to create “a strong implication” the party is seeking to improperly extend a patent monopoly and that summary disposition of anticompetitive strike suits is desirable.[xxxii] This means consumer surveys or the like should not become routinely necessary. Yet cases may arise where consumer perceptions of functionality (or usefulness) are not immediately apparent from the product configuration itself, or the plaintiff has not made damaging statements, making survey evidence informative in the absence of more straightforward grounds for assessing functionality. This seems like a potential additional (fifth) category of functionality evidence not spelled out in cases like Ezaki Glico.
Conclusion
Foodstuff product configuration trade dress disputes provide an excellent case study of how courts have sought to preserve consumer access to functional product features, as well as producer access to easy and economical manufacturing techniques. After all, the purpose of trademark law in general is supposed to be about helping consumers identify whether something originates from company A or company B, for instance, but it is not meant to give anyone a monopoly on that something itself. Unless product configurations are relatively easily avoided by competitors making basically the same products, assertions of trade dress protection in pure product configurations have often been rejected. While courts remain sensitive to potential confusion over a product’s source, valid product configuration trade dress rights, as a matter of branding, should include a prominent, non-functional feature related to reputation that does not significantly diminish consumer enjoyment or ease of manufacturability.[*]
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
[vii] See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 28-32 (2001); Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 213-16 (2000); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 771,775 (1992); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 228-32 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 238 (1964); see alsoScott Paper Co. v. Marcalus Mfg. Co., Inc., 326 U.S. 249, 255-57 (1945).
[viii] Sweet Street Desserts, Inc. v. Chudleigh’s Ltd., 69 F. Supp. 3d 530, 532-33 and 546-50 (E.D. Pa. 2014) aff’d 655 F. App’x 103 (3d Cir. 2016); see also 15 U.S.C. § 1064(3).
[ix] Sweet Street Desserts, Inc. v. Chudleigh’s Ltd., No. 5:12-cv-03363 (E.D. Pa. Jan. 15, 2015) aff’d 655 F. App’x 103.
[xi] Qualitex, 514 U.S. at 165 (quoting Inwood, 456 U.S. at 850, n.10).
[xii] Ezaki Glico, 986 F.3d at 257; accordPIM Brands Inc. v. Haribo of Am. Inc., No. 22-2821 (3d Cir. Sept. 7, 2023) (alleged trade dress of wedge shape and red/white/green color scheme made watermelon candy identifiable and reminiscent of a watermelon wedge and was therefore functional and unprotectable, with Principal Register registration ordered to be cancelled; “[f]unctionality is not a high bar” and “[e]ven if the design chosen both promotes a brand and also ‘makes a product work better,’ it is functional and unprotectable.” (citing Ezaki Glico, 986 F.3d at 258)); cf. Sulzer Mixpac AG v. A&N Trading Co., 988 F.3d 174, 182-84 (2d Cir. 2021) (color-coding to denote size of dental mixing tips improved the operation of the goods, which affects their quality, and therefore was functional and unprotectable as trade dress even though not essential).
[xiii] Ezaki Glico, 986 F.3d at 257 (quoting TrafFix, 532 U.S. at 32).
[xiv] Dippin’ Dots, Inc. v. Frosty Bites Dist., LLC, 369 F.3d 1197, 1203 (11th Cir. 2004); Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494, 506-09 (6th Cir. 2013); Schutte Bagclosures Inc. v. Kwik Lok Corp., 193 F. Supp. 3d 245, 261-62 (S.D.N.Y. 2016) aff’d 699 F. App’x 93, 94 (2d Cir. 2017).
[xvi] Ezaki Glico Kabushiki Kaisha v. Lotte Int’l Am. Corp., No. 2:15-cv-05477, 2019 WL 8405592 at *6 (D.N.J., 7/31/2019).
[xvii] See holder (61), which holds one end of stick-shaped pastries (40) while (only) the other end is immersed in a container (62) of liquid coating material (e.g., chocolate). U.S. Pat. No. 8,778,428, FIG. 5 and col. 5, lines 15-18 & 45-50.
[xviii] See TMEP §1209.01(b) (Oct. 2018).
[xix] Eskimo Pie Corp. v. Levous, 35 F.2d 120 (3d Cir. 1929).
[xx] Id. at 122; see also, e.g.,E.H. Tate Co. v. Jiffy Ents., Inc., 196 F. Supp. 286, 298 (E.D. Pa. 1961); James Heddon’s Sons v. Millsite Steel & Wire Works, 128 F.2d 6, 13 (6th Cir. 1942).
[xxi] Eskimo Pie Corp. v. Levous, 24 F.2d 599, 599-600 (D. N.J. 1928).
[xxiii] Id.; cf., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223-24 (2014); Mayo Collab. Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 72-73 (2012).
[xxiv] AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1535-38 (11th Cir. 1986), cert. denied, 481 U.S. 1041 (1987), abrogated by Wal-Mart, 529 U.S. at 216, but see The Islay Co. v. Kraft, Inc., 619 F. Supp. 983, 990-92 (M.D. Fla. 1985).
[xxv] E.g., Spangler Candy Co. v. Tootsie Roll Inds., LLC, 372 F. Supp. 3d 588, 604 (N.D. Ohio 2019); Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 741 F. Supp. 2d 1165, 1172-76 (C.D. Cal. 2010).
[xxvi] Dippin’ Dots, 369 F.3d at 1202-07; see also 15 U.S.C. §1125(a)(3). The court incorrectly stated unregistered product configuration trade dress can be inherently distinctive, a position abrogated by Wal-Mart.
[xxvii] Dippin’ Dots, Inc. v. Mosey., 476 F.3d 1337 (Fed. Cir. 2007).
[xxviii] Dippin’ Dots, 369 F.3d at 1205-06.
[xxix] See Keystone Mfg. Co., Inc. v. Jaccard Corp., No. 03-CV-648, 2007 WL 655758 (W.D.N.Y., Feb. 26, 2007).
[xxx] Unette Corp. v. Unit Pack Co., 785 F.2d 1026, 1029 (Fed. Cir. 1986); see also Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 1124 (Fed. Cir. 2018) (calling the standards “analogous”).
[xxxi] TrafFix, 532 U.S. at 29-32; Dippin’ Dots, 369 F.3d at 1205-06.
[xxxii] Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 181 (1896); Wal-Mart, 529 U.S. at 213-14; see alsoMorton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488 (1942) (misuse of patent on machine to restrain unpatented salt tablet sales); Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) (improper trademark assertion after copyright expiration); EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56, 63-54 (2d Cir. 2000) (“musical composition cannot be protected as its own trademark” because “[t]he creation and expression of an original work is protected by copyright law, and once an original work has been produced trademark law is not the proper means of protecting the rights in this originality”; declining to rule “that a product itself—in this case, the song—can serve as its own trademark”); Korzybski v. Underwood & Underwood, Inc., 36 F.2d 727, 728-29 (2d Cir. 1929) (election of protection doctrine bars copyright after obtaining patent: “An inventor who has applied for and obtained a patent cannot extend his monopoly by taking out a copyright . . . on what he has already diagrammatically disclosed”) accord Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637, 642 (2d Cir. 1958) (“grant of a patent presupposed a dedication to the public of the disclosure, except so far as the statute specifically reserved it to the patentee”).
