More US design law blogs

And in the interest of balance, here are a couple of other design blogs (heavily US-oriented):

• The Ordinary Observer - another US blog, this time from Lando & Anastasi.  New and unashamedly corporate, with some serious content and more pretty pictures.
• Shapeblog - does anyone know whatever happened to this?  Quite a lot of interesting content over 2006-2008, but nothing since.
• Finally, Rob Katz at Banner & Witcoff is rumoured to have a serious offering in the pipeline - watch this space for news of the launch in the near future.

Let us know of any other interesting design law blogs out there and we'll post the links.

Furniture Law - sofa, so good?

This is just a quick plug for Womble Carlyle's Furniture Law Blog (yes, seriously).  One could obviously comment that it is intended to make them a household name, recommend Jack Hicks for a Chair in Furniture Law somewhere, discuss bringing a law suite, etc etc.  But setting that aside, there is quite a lot of interesting information on US design patent infringement actions concerning furniture-related designs - who knew the field was so litigious? 
Here are a few of their 2010 design case comments:

• http://womblefurniturelaw.blogspot.com/2010/06/true-innovations-sues-on-design-patent.html
• http://womblefurniturelaw.blogspot.com/2010/06/naos-sues-on-extendable-table-patent.html
• http://womblefurniturelaw.blogspot.com/2010/06/century-america-sues-on-three-design.html
• http://womblefurniturelaw.blogspot.com/2010/09/kickin-it-old-school.html
• http://womblefurniturelaw.blogspot.com/2010/03/bernhardt-files-declaratory-judgment.html
• http://womblefurniturelaw.blogspot.com/2010/01/strength-of-design-patents-seen-in-case.html

A useful site and we wish them well - running for two years, so it would seem to be a case of "Sofa, so good".  All furniture-related puns from readers with a few spare moments are gratefully posted regardless of quality.

Community Designs - Disclosures outside the EU

Alicante News carries an item on the appeal decision in case R 9/2008-3, the Holey Soles v Crocs appeal on the infamous yet enormously successful plastic sandals. Regular readers will recall that the US ITC decision of non-infringement on the parallel US design was overturned by the CAFC following Egyptian Goddess.  However, the European issues are significantly different, since the EU design (RCD 000257001-0001) could not take advantage of the earliest US priority dates, so that intervening sales in the US had taken place more than one year before the priority date claimed - specifically, exhibiting and selling at an International Boat Show in Florida, selling some thousands in Colorado, and running a website featuring pictures of the product.
Although the decision is not yet on the website, it appears that the Board held these disclosures were anticipating, and upheld the revocation of the design: in their view:
"The test is whether the sales could have reasonably become known to the relevant circles in the Community. And the answer is, in the Board's estimation, in the affirmative. The launch of a new product on the marketplace always attracts attention from the public at large, the press and the business circles. This sort of news circulates instantly and easily in the Internet era.”
With that in mind, European design law looks much like an "absolute novelty" regime, tempered only for the smallest or most obscure of disclosures - though, of course, the one year grace period usually gives plenty of time to file after marketing.
Is this the end of the design line?  Crocs have a habit of appealing (though not to this writer!) so perhaps the case will get to Court yet.  We will watch this space for you.

Stateside Spares Bill

A bill is before the House which would introduce a "Repair Clause" into US Design Patent Law.  H.R. 3059 (and S. 1368), the Access to Repair Parts Act, would add a new section 271(j) to 35 USC as follows:

‘(j) It shall not be an act of infringement of any design patent to make, use, offer to sell, or sell within the United States or import into the United States any article of manufacture that itself constitutes a component part of another article of manufacture, if the sole purpose of the component part is for the repair of the article of manufacture of which it is a part so as to restore its original appearance.’

It will not have escaped the notice of keen readers that this closely follows the language of the EU's CDR Art 110:

"protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) [i.e. otherwise infringing uses] for the purpose of the repair of that complex product so as to restore its original appearance."

with the difference, however, that the US proposal bites not only on designs of spares, but on all designs.  It appears to be pretty much the same as H.R. 5638, for reasons I am too ignorant of US procedure to understand.

As always, we appreciate the meticulous background on Prof. Dennis Crouch's Patently-O blog, here and here.  Dennis points out a startling rise in car spare registrations since 2000.  Although many of these are foreign-owned, it is likely to have been the successful 2007 Ford ITC action against imported spares (which settled on appeal with a royalty-bearing licence) which motivated this US move.  The "Quality Parts Coalition"'s timeline giving some historical background is here.  (As one of my former colleagues used to say, there are two types of "quality" ...).

We suspect that the third-party spares suppliers are fighting a more uphill battle in the US than in the EU (and even there, they only half-won).  Perry Saidman comes out swinging here, concluding that the purpose of the Bill is merely "to give knock off companies a free ride on the coattails of legitimate designers."  Some of the other testimony is also worth reading.

Europeans will await the outcome with interest, and a certain sense of deja vu.

US design validity

Thanks to the very wonderful Patently-O blog for pointing us to this recent draft article by Mueller & Brean on US design patent validity - arguing, as we have done here, that there is little or no place for the obviousness-style approach used in utility patent cases, and that the "ordinary observer" test ought to rule validity as it does infringement.
Also on Patently-O, an illuminating aside on the US approach to the conflicting (or are they?) drivers of functionality and ornamentation, with reference to Bissell Homecare v. Wildwood Industries - it bears careful comparison with the approach of the OHIM Board of Appeal in the Chaff Cutters case reported here a little while back.

US Designs - Validity post-Egyptian Goddess

This rather conventional-seeming tractor tyre (sorry, "tire") was the subject of U.S. Design Patent No. 360,862, on which the proprietor attempted to get a preliminary (aka interlocutory aka interim) injunction in Titan Tire Corp. v. Case New Holland, Inc., No. 08-1078 (Fed. Cir. June 3, 3009), link here. They failed both at first instance and on appeal. To get an interlocutory injunction in the US requires a likelihood of success on the merits, and where the defendant has shown some reasonably persuasive prior art (which can't have been hard in this case) the plaintiff has to demonstrate that they will likely overcome it at trial - quite a high burden of proof.

The Federal Circuit reviewed their previous practice on assessing designs against prior art, which had required identification of a "primary" reference which could then be modified by a "secondary" reference to reach the design (Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)).

They commented that this tended to focus attention on the differences from the art, rather than the design as a whole, and that this was inconsistent with the analysis for infringement purposes post-Egyptian Goddess where the similar "point of novelty" test has been rejected (Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665, 670-71 (Fed. Cir. 2008) (en banc). However, they heold that "it is not clear to what extent, if any, the doctrine applicable to obviousness should be modified to conform".

They also commented on the application of the KSR patent approach to obviousness (KSR International Co. v. Teleflex, Inc 550 U.S. 398 (2007)); this was “new and untested ground” and it was "not obvious that the Supreme Court necessarily intended to exclude design patents from the reach of KSR".

It is a shame that the Federal Circuit were unable or unwilling to give a clear ruling on applying the same "overall impression" test for both validity and infringement (as in the EU). Designs are fundamentally different to inventions, and there is no real logic to applying patent law such as KSR unmodified to take account of this. Whilst making the right kind of noises, this case leaves design invalidity in a state of flux.