Last week, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the law on comparison prior art in design patent cases. In the decision, captioned Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299, 21-2338 (Sept. 15, 2023), the Federal Circuit provided guidance on the types of prior art that can be reviewed by courts and juries in the comparative prior art stage of the infringement analysis of design patent cases.  In the initial case, Columbia Sportswear North America, Inc. (“Columbia”) sued Seirus Innovative Accessories, Inc. (“Seirus”) for infringing U.S. Design Patent No. D657,093 (“the D’093 Patent”) via sales of its products containing HeatWave™ liner material, as illustrated side-by-side below.

Continue Reading Design Patents are Heating Up at the Federal Circuit, Again

The recent proliferation of useful Artificial Intelligence (“AI”) tools for tasks like text, image, music, and software code generation is all the rage. In the intellectual property sphere, one of the hottest topics surrounding the use of these AI tools is whether the works of art or inventions (including works of industrial design) created using these tools can still be considered the creation of the individual author or designer. This question is of critical importance because the U.S. copyright and patent laws are currently written in a way that require human creation to be eligible for protection.

Continue Reading AI & IP: A Not-so-Perfect Pairing

In a surprising move, the Court of Appeals for the Federal Circuit (“CAFC”) has granted a petition for rehearing en banc on the issue of whether the test for determining obviousness of design patents has been overruled by the Supreme Court’s 2007 decision in KSR v. Teleflex, 550 U.S. 398 (2007).  In the case, captioned LKQ Corp. et al v. GM Global Technology, the en banc CAFC has requested briefing as to whether the design patent obviousness test originally set forth in In re Rosen, 673 F.2d 388 (CCPA 1982) and blessed by the CAFC in Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) is good law in view of the Supreme Court’s obviousness holding in KSR, which significantly modified the obviousness inquiry for utility patents.  While there was no doubt that KSR did not apply to design patents since the underlying obviousness analysis for utility patents differs so significantly from that for design patents, the en banc CAFC has clearly demonstrated a renewed interest in the issue, and any changes to the test can have significant implications for all future-filed, pending, and active design applications and patents. 

Continue Reading Uncertainty Ahead if Design Patent Obviousness Test is Abrogated by <em>en banc </em>CAFC

Quarles & Brady partner and editor-in-chief of the firm’s Protecting the Product design rights blog, James Aquilina, and patent engineer Harrison Powell attended the 16th Annual USPTO Design Day on May 4, 2023, in Alexandria, Virginia at the USPTO’s Headquarters.

There was a range of programming at Design Day, including remarks from Derrick Brent, Deputy Director of the United States Patent and Trademark Office and Karen Young, Director of TC 2900, who delivered the “State of the Design Technology Center.”  Further to high-ranking officials from the USPTO, there were a plurality other presentations and conversations amongst members of the design law community that included private practice prosecutors and litigators, in-house counsel, industrial designers, USPTO Examiners, and product design expert witnesses.

A few key takeaways from the programing include:

  • U.S. Design filings in FY 2021 up 17.6% over FY 2020;
  • “Rocket Docket” filings more than doubled from FY 2021 to FY 2022, from 4246 to 9899 filings;
  • The unexamined application inventory is declining but still near an all time high;
  • The USPTO has been actively recruiting Design Examiners and has increased the number of Examiners 67% between FY 2018 and FY 2022, from 178 to 294.

Beyond information on the current state of TC 2900, there were a range of topics discussed that included recent design patent appeal decisions such as Ideavillage Products Corp. v. Koninklijke Philips NV (PTAB October 25, 2022) and Ex parte Grede et al. (PTAB September 29, 2022), as well as major ongoing federal court litigation relating to design patent cases, such as LKQ Corp. et al. v. GM Global Technology Operations LLC.

REGISTRATION NOW OPEN – 16th Annual USPTO Design Day on May 4, 2023

Registration for the 16th Annual USPTO Design Day 2023 has been made available and interested parties can register virtually or in person here.

The 16th annual Design Day will be held on May 4, 2023, from 10 a.m.-5 p.m. ET, with options to attend either in-person at USPTO headquarters in Alexandria, Virginia or virtually. Participants will get insights from United States Patent and Trademark Office (USPTO) design examiners and managers, the Patent Trial and Appeal Board (PTAB), design patent practitioners, and more.

Quarles’ design patent attorneys have spoken at previous Design Days and will once again be in attendance at this year’s event.

This year’s event features:

  • Welcome remarks from Karen Young, Director of Technology Center 2900.
  • An update on international policy developments from Courtney Stopp of the USPTO’s Office of Policy and International Affairs.
  • Comments from Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.
  • Information about patent, trademark, and copyright protection systems from Damian Porcari, Director, Midwest Regional USPTO Office.
  • Much more!

Design Day is co-sponsored by American Intellectual Property Law Association (AIPLA), the Intellectual Property Owners Association (IPO), and the USPTO.

The USPTO’s Trademark Trial and Appeal Board (“Board”) recently ordered the cancellation of two trademark registrations for product configurations of safety helmets, shown below and both directed to “… a three dimensional configuration of two ridges located along the center of a safety helmet….”

Continue Reading Safety Helmet Product Configuration Trademark Registrations Demolished by Lack of Evidence of Acquired Distinctiveness

Save the Date to Attend the 16th Annual USPTO Design Day

The 2023 iteration of the United States Patent and Trademark Office (USPTO)’s annual Design Day will be held on May 4, 2023, with options to attend either in-person at USPTO headquarters in Alexandria, Virginia or virtually.

Registration will be made available in April 2023, and we will share the sign-up link with our blog readers at that time.  Quarles’ design patent attorneys have spoken at previous Design Days and will once again be in attendance at this year’s event.

Continue Reading SAVE THE DATE – 16th Annual USPTO Design Day Announced for May 4, 2023

In a recent district court decision, a New Jersey federal judge granted summary judgment to an accused infringer of a patented design. Skull Shaver LLC. v. IdeaVillage Products Corp., No.18cv3836 (EP) (AME) (D.N.J. Dec. 28, 2022).  In its complaint, Skull Shaver claimed that Ideavillage’s leg shaver infringed its design patent on a head shaver.  The patent-in-suit is U.S. D693,060 (“the D’060 patent”) for an electric head shaver, and the accused product is a Flawless Legs Shaver, which is itself covered by U.S. D853,645 (“the D’645 patent”). 

Continue Reading Flawless Legs and a Shaved Head? An Ordinary Observer Can Tell the Difference

Oral arguments were held on Thursday, January 12, 2023, in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc.  The parties faced off in a rematch at the Federal Circuit following an earlier bout involving the same design patent, U.S. D657,093 (“D’093”) for a “Heat Reflective Material,” which as illustrated side-by-side below had been asserted against Seirus’s HeatWave™ material.

Continue Reading Design Patents are Heating Up at the Federal Circuit

As highlighted by a recent decision of the United States District Court for the Southern District of New York[1], a party’s failure to properly mark its products with its issued U.S. patent number(s) will very likely result in a complete loss of the ability to recover infringement damages that occurred prior to the delivery of a specific allegation of infringement to an accused infringer.  As further explained below, companies should thus very seriously consider the inclusion of patent markings on all relevant products. Continue Reading Failure to Mark Patent Number on Products Results in Complete Loss of Pre-Suit Infringement Damages