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 Modern Equipment, Inc., 21-2299 (submitted however not determined) (oral argument recording accessible here)

The Federal Circuit heard oral arguments yesterday within the second spherical of Columbia v. Seirus. (Prior Patently-O protection of this enchantment is offered 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 particular sort of product. In making that argument, I acknowledged that this method may create some line-drawing issues, together with the kind which have arisen in Columbia v. Seirus. I instructed that, with respect to infringement:

[O]ne answer could be to place the burden of proof on the patent proprietor to indicate that the accused gadget needs to be thought-about the identical sort of product. Courts have been tasked with figuring out which merchandise are and will not be the identical “sort” of product within the trademark context; there is no such thing as a apparent cause why they shouldn’t be capable of do the identical within the design patent context.

If, nevertheless, the line-drawing downside proves to be intractable, an alternate could be to find out product “sorts” in line with the Locarno Settlement Establishing an Worldwide Classification for Industrial Designs. Particularly, “sort of product” might 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 will not be excellent for this use however it might present a second-best answer if judicial frequent legislation 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) should be restricted to the precise, particular sort 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 whether the accused product (or reference) is identical common sort of article.

I additionally instructed that the product sort might be decided as regards to Locarno sub-classes. How would possibly that work in observe?

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), would possibly 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, in case you 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 get together desires to show one thing is identical sort of product.

For infringement, then, the patent proprietor ought to need to show the accused product is identical sort as what’s claimed. For comparability prior artwork, the accused infringer ought to need to show the reference is the correct sort. (It is because using the prior artwork in evaluating infringement is a one-way ratchet; it may 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 may embrace details about any business embodiments, together with data the patent proprietor has supplied 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 determine? Judges could be well-suited to make all 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 form of credibility or historical-facts dedication that we usually depart to juries. Certainly, it’s tough to think about a solution to successfully instruct juries on this concern with out injecting undue confusion into the infringement evaluation.