mobile devices. elisabeth fink boards of appeal, ohim patrice de candé general partner of de...
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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
Designs for Mobile DevicesUS Perspective
Chris Carani McAndrews, Held & Malloy Ltd.
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
General Rule (U.S.)
“Solid lines” are part of claim design.”
“Dotted lines” are NOT part of claimed design.”
Dotted Lines
Microsoft Webcam, US Patent D647,937
Mount is not part of claimed design
Dotted Lines
Microsoft Webcam, US Patent D647,937
US D647,933“ELECTRONIC CAMERA”
US D647,946“SUPPORT FOR ELECTRONIC CAMERA”
Multiple Applications
Dotted Lines and Continuation Practice
D548,744(entire device)
D573,223(screen, no click wheel)
D562,847(no screen, click wheel)
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.
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
Importance of Dotted Lines
Apple’s ‘087 Design Samsung’s Accused Galaxy 4 S
5 64321
Claimed Not present
Apple’s US D593,087
Apple’s US D593,087
Importance of Dotted Lines
Apple’s ‘087 Design Samsung’s Accused Galaxy 4 S
Disclaimed
Design Corpus and Design Patent Infringement
Set the way back machine…Gorham v White (1871)
Gorham v. White (1871)
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.”
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:
Gorham v. White (1871)
Gorham v. White (1871)
Gorham v. White (1871)
INFRINGEMENT
Gorham v. White (1871)
Prior Art
Gorham v. White (1871)
Prior Art
NON-INFRINGEMENT
Nature of the Product
US D513,395Title: Automobile Body
Accused Product Automobile
Nature of the Product
US D513,395Title: Automobile Body
Accused Product Go-Cart or UTV
Nature of the Product
US D513,395Title: Automobile Body
Accused Product Child’s Toy
Nature of the Product
US D593,087Title: Smartphone
Accused Product Child’s Toy
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.
Concept 1: Functionality - Validity
Validity Question: Is Appearance of Overall Claimed Design Dictated by Function?
Patented Design 1 Patented Design 2 Patented Design 3
Concept 2: Functionality – Scope of Protection
Scope of Protection Question: Is Appearance of Claimed Design Feature Dictated by Function?
Patented Design Accused Design
32
‘167 Patented Design Accused DesignPrior Art
Richardson v. Stanley Works, Inc. (2010)
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
34
Claim Construction
“Discount,” “Ignore,” “Factor out,” these features.
35
1
3
4
2
hammer-head
jaw
handle
crow-bar
36
1
3
4
2
hammer-head
jaw
handle
crow-bar
37
1
4
3
2
hammer-head
jaw
handle
crow-bar
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1
3
4
2
hammer-head
jaw
handle
crow-bar
Claim Construction = Claim Destruction
Functionality – Scope of Protection
Scope of Protection: Are there any features “dictated by function”?
Questions