Visitor Publish by Prof. Burstein: Design patents: Line drawing & Locarno

By Sarah Burstein, Professor of Legislation at Suffolk College Legislation College.

Columbia Sportswear North America, Inc. v. Seirus Revolutionary Equipment, Inc., 21-2299 (submitted however not determined) (oral argument recording out there here)

The Federal Circuit heard oral arguments yesterday within the second spherical of Columbia v. Seirus. (Prior Patently-O protection of this attraction is out there right here.) My 2015 article, The Patented Design, was talked about a number of instances through the argument.

In that article, I argued {that a} design patent’s scope needs to be restricted to the design as utilized to a selected kind of product. In making that argument, I acknowledged that this strategy might create some line-drawing issues, together with the kind which have arisen in Columbia v. Seirus. I advised that, with respect to infringement:

[O]ne answer can be to place the burden of proof on the patent proprietor to indicate that the accused machine needs to be thought-about the identical kind of product. Courts have been tasked with figuring out which merchandise are and usually are not the identical “kind” of product within the trademark context; there isn’t a apparent cause why they shouldn’t be in a position to do the identical within the design patent context.

If, nevertheless, the line-drawing drawback proves to be intractable, an alternate can be to find out product “sorts” in line with the Locarno Settlement Establishing an Worldwide Classification for Industrial Designs. Particularly, “kind of product” could possibly be outlined to map onto Locarno sub-classes. For instance, Locarno Class 10 contains subclasses for “Clocks and Alarm Clocks,” “Watches and Wrist Watches,” and “Different Time-Measuring Devices.” The Locarno classification system shouldn’t be excellent for this use however it could present a second-best answer if judicial widespread regulation improvement proves unworkable.

Sarah Burstein, The Patented Design, 83 Tenn. L. Rev. 161, 219–20 (2015) (footnotes omitted). So my argument was not that design patent scope (and on this case, the scope of comparability prior artwork) have to be restricted to the precise, particular kind of article named expressly within the verbal portion of the design patent declare.

As a substitute, I argued that courts ought to look as to if the accused product (or reference) is identical basic kind of article.

I additionally advised that the product kind could possibly be decided with regards to Locarno sub-classes. How may that work in apply?

Trying on the dispute in Columbia v. Seirus, the most relevant class would appear to be Class 5, “Textile piece items, synthetic and pure sheet materials.” Listed below are the related class subheadings:

So which subclass(es) would apply right here? This case is an instance of how the “substantial latitude” that design patent candidates are given in describing the related article of their declare language, see MPEP § § 1503.01(I), may generally complicate later makes an attempt at classification.

The asserted design patent, U.S. Patent No. D657,093, claims “the decorative design of a warmth reflective materials.” The one Class 5 subclass heading that makes use of the phrase “materials” is 05-06, “Synthetic or Pure Sheet Materials.” However the patented design appears to be directed extra to one thing just like the examples talked about in subclass 05-05, “Textile Cloth.” (Certainly, for those who look nearer on the full Locarno Classification, subclass 05-05 particularly contains ID No. 100480, “Insulating materials.”)

So which bucket would the D’093 slot in finest? The place classification is disputed, the burden of persuasion needs to be on whichever celebration desires to show one thing is identical kind of product.

For infringement, then, the patent proprietor ought to should show the accused product is identical kind as what’s claimed. For comparability prior artwork, the accused infringer ought to should show the reference is the correct kind. (It’s because the usage of the prior artwork in evaluating infringement is a one-way ratchet; it will possibly solely be used to slender the presumptive scope of a declare, to not enlarge it. See Sarah Burstein, Is Design Patent Examination Too Lax?, 33 Berkeley Tech. L.J. 607, 612 (2018).)

Proof related to this inquiry might embrace details about any business embodiments, together with info the patent proprietor has offered to regulators about their product or market. And if a patent proprietor has registered their design internationally, the design could have already got a Locarno sub-class.

Who ought to resolve? Judges can be well-suited to make some of these determinations. Certainly, these points are more likely to come up on the Markman stage or, as in Columbia v. Seirus, in motions in limine. This isn’t the sort of credibility or historical-facts willpower that we usually go away to juries. Certainly, it’s tough to think about a method to successfully instruct juries on this difficulty with out injecting undue confusion into the infringement evaluation.