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Mobile Devices

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Mobile Devices. Elisabeth Fink Boards of Appeal, OHIM Patrice de Cand é General Partner of de Candé-Blanchard Chris Carani McAndrews, Held & Malloy Ltd. Chair: Darren Smyth Partner in Charge, EIP Elements Practice Group. Designs for Mobile Devices US Perspective. Chris Carani - PowerPoint PPT Presentation

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Page 1: Mobile Devices

Mobile Devices

Page 2: Mobile Devices

Elisabeth Fink Boards of Appeal, OHIM

Patrice de CandéGeneral Partner of de Candé-Blanchard

Chris Carani McAndrews, Held & Malloy Ltd.

Chair: Darren Smyth Partner in Charge, EIP Elements Practice Group

Page 3: Mobile Devices

Designs for Mobile DevicesUS Perspective

Chris Carani McAndrews, Held & Malloy Ltd.

Page 4: Mobile Devices

Outline of Today’s Discussion

1. Dotted Lines

2. Design Corpus (i.e. Prior Art) and Infringement

3. Nature of the Product

4. Features Dictated by Technical Function

Page 5: Mobile Devices

General Rule (U.S.)

“Solid lines” are part of claim design.”

“Dotted lines” are NOT part of claimed design.”

Page 6: Mobile Devices

Dotted Lines

Microsoft Webcam, US Patent D647,937

Mount is not part of claimed design

Page 7: Mobile Devices

Dotted Lines

Microsoft Webcam, US Patent D647,937

Page 8: Mobile Devices

US D647,933“ELECTRONIC CAMERA”

US D647,946“SUPPORT FOR ELECTRONIC CAMERA”

Multiple Applications

Page 9: Mobile Devices

Dotted Lines and Continuation Practice

D548,744(entire device)

D573,223(screen, no click wheel)

D562,847(no screen, click wheel)

Page 10: Mobile Devices

Dotted Lines and Continuation Practice

Filing8/24/05

Filing3/22/07

IssuanceD548,744

IssuanceD573,606

Filing05/08/07 Abandoned

Filing2/13/09

IssuanceD650,355

Filing08/10/11

IssuanceD656,159

Etc.

Page 11: Mobile Devices

Apple’s US D593,087 has 6 Embodiments

Apple D‘087Embodiment 5

Apple D‘087Embodiment 6

Apple D‘087Embodiment 4

Apple D‘087Embodiment 3

Apple D‘087Embodiment 2

Apple D‘087Embodiment 1

Embodiment Speaker Screen Border Home Button

1 Unclaimed Unclaimed Claimed

2 Unclaimed Claimed Unclaimed

3 Claimed Unclaimed Unclaimed

4 Unclaimed Claimed Claimed

5 Claimed Unclaimed Claimed

6 Claimed Claimed Unclaimed

Page 12: Mobile Devices

Importance of Dotted Lines

Apple’s ‘087 Design Samsung’s Accused Galaxy 4 S

5 64321

Claimed Not present

Page 13: Mobile Devices

Apple’s US D593,087

Page 14: Mobile Devices

Apple’s US D593,087

Page 15: Mobile Devices

Importance of Dotted Lines

Apple’s ‘087 Design Samsung’s Accused Galaxy 4 S

Disclaimed

Page 16: Mobile Devices

Design Corpus and Design Patent Infringement

Set the way back machine…Gorham v White (1871)

Page 17: Mobile Devices

Gorham v. White (1871)

Page 18: Mobile Devices

Gorham v. White (1871)

If…“in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

Page 19: Mobile Devices

Egyptian Goddess, Inc. v. Swisa, Inc. (2008)

1. “Is the overall appearance of the claimed patented design

2. substantially the same as

3. the overall appearance of the accused design

4. in view of the prior art?”

Eye of an Ordinary Observer:

Page 20: Mobile Devices

Gorham v. White (1871)

Page 21: Mobile Devices

Gorham v. White (1871)

Page 22: Mobile Devices

Gorham v. White (1871)

INFRINGEMENT

Page 23: Mobile Devices

Gorham v. White (1871)

Prior Art

Page 24: Mobile Devices

Gorham v. White (1871)

Prior Art

NON-INFRINGEMENT

Page 25: Mobile Devices

Nature of the Product

US D513,395Title: Automobile Body

Accused Product Automobile

Page 26: Mobile Devices

Nature of the Product

US D513,395Title: Automobile Body

Accused Product Go-Cart or UTV

Page 27: Mobile Devices

Nature of the Product

US D513,395Title: Automobile Body

Accused Product Child’s Toy

Page 28: Mobile Devices

Nature of the Product

US D593,087Title: Smartphone

Accused Product Child’s Toy

Page 29: Mobile Devices

Two Distinct Functionality Concepts: (1) Validity and (2) Scope of Protection

Concept 1Validity – Overall Appearance of Claimed Design.

Concept 2Scope of Protection – Appearance of Individual Features.

Page 30: Mobile Devices

Concept 1: Functionality - Validity

Validity Question: Is Appearance of Overall Claimed Design Dictated by Function?

Patented Design 1 Patented Design 2 Patented Design 3

Page 31: Mobile Devices

Concept 2: Functionality – Scope of Protection

Scope of Protection Question: Is Appearance of Claimed Design Feature Dictated by Function?

Patented Design Accused Design

Page 32: Mobile Devices

32

‘167 Patented Design Accused DesignPrior Art

Richardson v. Stanley Works, Inc. (2010)

Page 33: Mobile Devices

33

Claim Construction – as a Matter of Law

“Richardson's multi-function tool comprises several elements that are driven purely by utility. As the district court noted, elements such as the handle, the hammer-head, the jaw, and the crowbar are dictated by their functional purpose.”

2

41

3

hammer-head

jaw

handlecrow-bar

Page 34: Mobile Devices

34

Claim Construction

“Discount,” “Ignore,” “Factor out,” these features.

Page 35: Mobile Devices

35

1

3

4

2

hammer-head

jaw

handle

crow-bar

Page 36: Mobile Devices

36

1

3

4

2

hammer-head

jaw

handle

crow-bar

Page 37: Mobile Devices

37

1

4

3

2

hammer-head

jaw

handle

crow-bar

Page 38: Mobile Devices

38

1

3

4

2

hammer-head

jaw

handle

crow-bar

Page 39: Mobile Devices

Claim Construction = Claim Destruction

Page 40: Mobile Devices

Functionality – Scope of Protection

Scope of Protection: Are there any features “dictated by function”?

Page 41: Mobile Devices

Questions