Category Archives: Design

Reflections on USPTO Design Day 2017: What’s Next?

Reflections on USPTO Design Day 2017: What’s Next?

Author: Elizabeth D. Ferrill
Editor: Eric P. Raciti

Each April, the design patent community gathers at the USPTO to discuss design prosecution and protection. This year, on April 25, another sell-out crowd of over 300 people attended the 11th Annual USPTO Design Day, which is sponsored by the USPTO, IPO, AIPLA, the IP section of the ABA, and the IDSA. This year’s event including important updates on changes in Technology Center 2900 (which is responsible for all design examination), international protection of designs, including a special guest from the Canadian IP office, as well as evolving trends in fashion, the usefulness of motions to dismiss in design patent cases, and the potential effect of prosecution history in litigation and claim construction.
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Apple v. Samsung: The Parties Weigh in on Next Steps

Apple v. Samsung: The Parties Weigh in on Next Steps

Author: Elizabeth D. Ferrill
Editor: J. Derek McCorquindale

On Tuesday, December 6, 2017, the United States Supreme Court issued its first opinion in a design patent case in more than 120 years.  In the long-running smartphone saga between Apple and Samsung, the issue before the Supreme Court was the proper interpretation of a 35 U.S.C. § 289.  Under this statute, when an infringer is found to have applied a patented design to any “article of manufacture,” that infringer is “liable to the [patent] owner to the extent of his total profit, but not less than $250[.]” Continue reading

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Prosecution History Estoppel & Unelected Designs

Author: Elizabeth D. Ferrill
Editor: Adriana L. Burgy

District Court Decision:  Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., Case No. 16-3061 (C.D. Cal. Nov. 3, 2016).


In 2014, the Federal Circuit recognized that prosecution history estoppel applies to design patents, specifically in the context of amendments made in response to a restriction requirement. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, 739 F.3d 694 (Fed. Cir. 2014).  In Pacific Coast, the Federal Circuit held that cancelling an embodiment in a design patent application in response to a restriction requirement is a surrender of the cancelled subject matter and that such a surrender is made in order to secure the patent.  But Pacific Coast did not address the exact scope of the surrender, noting that it would be based on what design was elected, what design was not, and the circumstances of the case.   Continue reading

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The Internet of Things: Divided Infringement

Author: Kenie Ho, Matthew Hlinka, and James Stein
Editor: Stephanie M. Sanders

Some analysts predict the Internet of Things (IoT) market will grow from nearly $2 trillion in 2013 to $7 trillion in 2020. With this rapid growth comes new challenges for companies trying to protect and enforce their patent rights. Of particular concern for IoT companies is divided or joint infringement issues.

To prove infringement, a patent owner typically must show that a single party sells a product or performs a process that meets all elements of a patent claim. IoT inventions, however, often create value for consumers by connecting disparate devices—usually made by different entities—in creative ways. Continue reading

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‘Designed’ to Scale? Design Application Pendency Down Despite Increased Filings

Author: Justin N. Mullen
Editor: Elizabeth D. Ferrill

On May 5, the U.S. Patent and Trademark Office and the Patent Public Advisory Committee held their quarterly meeting at the USPTO’s Alexandria headquarters. Of a number of topics, the meeting included a patent operations update. Particularly, their slides (reproduced below) highlighted a few trends in design patent application filings.

5.13.16 Post Image   Continue reading

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