Design Patent Infringement: How Does it Happen?

Design patents protect the ornamental aspects of an article's appearance, ensuring that unique designs for products and other articles of manufacture receive legal protection against unauthorized replication. However, design patent infringement is a bit esoteric and an often contentious area of intellectual property law. This article explores the legal standards for determining infringement and hypothetical scenarios illustrating varying outcomes in infringement cases.

What Does a Design Patent Protect?

A design patent safeguards the ornamental design of a functional item. Unlike utility patents, which protect how an invention works, design patents focus solely on aesthetic aspects, as illustrated in the patent drawings. Importantly, only the non-functional, ornamental features are protected, leaving functional aspects outside the scope of design patent protection.

The scope of protection is defined by the visual characteristics of the patented design as depicted in its drawings. These drawings represent the claimed design and form the basis for evaluating design patent infringement.

Functional and Ornamental Elements

In design patent cases, courts must separate ornamental features from functional ones. Elements dictated solely by functionality do not qualify for design patent protection. For instance, in the Egyptian Goddess, Inc. v. Swisa, Inc. (2008) case, the Federal Circuit Court of Appeals clarified that functional aspects should be excluded from the infringement analysis, focusing instead on the overall visual impression.

Design Patent Examination and Issuance by United States Patent and Trademark Office

Design patent rights can only be acquired by filing a design patent application with the United States Patent and Trademark Office (USPTO). The USPTO examines the design to determine whether it is novel, non-obvious, and meets all formal requirements. The patent office must evaluate whether the design is original (novel) and whether one of ordinary skill in the relevant art would find the applied-for design obvious in view of the relevant prior art. Design patent obviousness may be found based on one or more prior art references, e.g., a combination of a primary reference that is similar to the applied-for design and a secondary reference that fills in deficiencies of the primary reference. The references must be the same type of article or product. For example, if the claimed design is for an article of clothing, the prior art must be clothing or something very similar. This is referred to as the analogous art requirement. If there is no analogous prior art that discloses the design or is so similar that it renders the design obvious, the USPTO will issue the design patent. Once the USPTO issues the design patent, it can be enforced against infringing parties.

The Legal Test for Design Patent Infringement

The standard for determining design patent infringement was clarified by the Federal Circuit in the Egyptian Goddess case. The court adopted the ordinary observer test as the sole standard, moving away from the "point of novelty" test. Under the ordinary observer standard, infringement occurs if, in the eyes of an ordinary observer, the claimed and accused designs are substantially similar, causing the observer to mistake one for the other. The accused design infringes the design patent if it embodies the patented design or is a colorable imitation thereof. However, relevant prior art references must be considered in making the infringement determination.

The design patent infringement test applied by federal courts involves a two-step analysis:

1. First Prong - Plainly Dissimilar Comparison: Determine whether the accused product is "plainly dissimilar" from the patented design. If so, the analysis ends. This approach is quite different from utility patent infringement analysis, in which infringement is found only if each and every claimed element is present in the infringing article either literally or by equivalent. Design patent infringement is more based on perception by an ordinary observer, which is somewhat similar to trademark infringement analysis where consumer confusion between trademarks must be shown.

2. Second Prong - Comparison with Prior Art: If the accused product is not plainly dissimilar from the patented design, compare both the claimed and accused designs against the prior art to assess whether the unique aspects of the patented design are present in the accused design. The determination the portions of the design that are found in the prior art is usually performed by the district court in a claim construction hearing, or a Markman hearing.

Apple filed a high profile design patent infringement lawsuit against Samsung on April 15, 2011, in the United States District Court for the Northern District of California. Apple accused Samsung of infringing its design and utility patents, focusing on Samsung’s smartphones and tablets, including products in the Galaxy series. Apple alleged that Samsung's devices copied key features of the iPhone and iPad, including their distinctive designs and user interfaces. Central to the case were Apple’s claims that Samsung’s products unlawfully mimicked the sleek, minimalist design of its devices, particularly focusing on patented design elements like those in the D618,677 patent. Below is an example comparison of the design patent to the Samsung products. This is the kind of design patent infringement analysis that is carried out in such a case.

Hypothetical Scenarios of Design Patent Infringement

Case where Infringement is Unlikely:

A company designs a smartphone case that has a conventional, plain case design that simply follows the outline of an iPhone. The only unique element of the case is the company's decorative logo on the back surface. Another company releases a case with the same conventional, plain design with a different logo. The designs only overlap with respect to common, plain general design. The designs do not overlap with respect to the unique design of the company logo. Conventional elements cannot be a basis for infringement, and thus there is no infringement.

Close Case - Infringement of the Patented Design May be Found:

A patented chair design features a unique combination of curved and straight lines, creating a distinctive aesthetic. The patented design also includes decorative features in the cushions of the chair. A competitor’s chair replicates the curved and straight line elements of the design, but does not include the decorative elements on the cushions of the patented design.

Under the ordinary observer standard, the fact finder (a jury) might find the designs substantially similar, particularly if the omitted features are not prominent. Prior art designs would play a critical role in the district court's assessment.

Clear Infringement - Same Design and No Relevant Prior Art:

A patented shoe design displays a specific pattern on the sole, providing a recognizable look that is not found in the prior art. A competitor sells shoes with an identical sole design, but different upper portion of the shoe. Here, the patented design specifically covers the pattern on the sole and is not limited to any design elements on the upper portion of the shoe. The competitor's design is not plainly dissimilar and the patented design is wholly original. The competitor’s shoe would likely be deemed a colorable imitation, constituting design patent infringement.

Enforcing Design Patents: Key Challenges

Design patent owners face challenges in proving infringement due to the subjective nature of the ordinary observer test. Courts often rely on side-by-side comparisons of the claimed and accused designs, as well as input from expert witnesses and consumer surveys. Moreover, considerations of functional aspects of the design and claim construction in view of related prior art designs can complicate the analysis.

Avoiding Design Patent Infringement and Best Practices

Your business can take proactive steps to avoid design patent infringement. Before launching a new product, a Freedom to Operate (FTO) search may be conducted to determine whether there are enforceable patents that pose an infringement risk. This search may coincide with a patentability search to determine whether the new design is potentially patentable. If there are enforceable design and/or utility patents that pose a potential infringement risk, you may modify your designs to ensure they are plainly dissimilar from the patented designs.

You should also focus on designs with unique visual impressions that the typical consumer can easily distinguish from existing designs. The closer your designs are to what has created by third parties and competitors, the more likely you will face an infringement issue.

You should also seek legal advice during product development to help you navigate potential infringement issues and minimize risks. By prioritizing these steps, businesses can safeguard their products, respect intellectual property rights, and avoid costly disputes.

Contact an Experienced Patent Attorney

Accounting for potential design patent infringement requires the skill and knowledge of an experienced patent practitioner. The attorneys at Sierra IP Law have decades of experience in the field of patents and can assist you with patent procurement, patent infringement analysis and disputes, and any other intellectual property issues. Contact us for a free consultation.

© 2024 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.