Prior Art from the Ark - are old Community Designs legally new?

We see that an enterprising Evangelical church is to rebuild Solomon's Temple in Brazil (though shaved, in the Brazilian manner, of its gold - a notoriously poor structural material).  We wonder whether an exact replica could be novel over the original lost, lamented Temple, or the descriptions of the same in Scripture to which the church is presumably working? 
Lacking, as we do, the wisdom of Solomon, we are happy to see that according to Hogan Lovells' excellent newsletter, the Milan Court wrestled with somewhat the same question in Fortune S.r.l. v. Schneider Italia S.p.a (Court of Milan, Decision of 3 March 2010, N. 2843/2009), a case concerning rival watchmakers. I can't find either an online copy of the judgment or details of the Community Design concerned - can any of our readers assist? 
Quoting with thanks to the authors Maria Luce Piattelli and Alberto Bellan of Hogan Lovells, "The court clarified that "the informed user was not a person skilled in the art who has a deep knowledge of prior designs including very early patent rights filed and only marketed outside the European Community". Therefore the informed user did not necessarily have knowledge about "designs filed in very old times" which have not been used in the relevant market."
Which raises the question: can old prior art really vanish from the public mind after a while?  And if so, for novelty, individual character, or both?
In this case, the citations were apparently US patents from the early 20th century.  They would not, of course, have come to the attention of readers in the European Union for alas, dear readers, at the time there was no such beast.  However, they would have been deposited on public display a few days after publication in the reference libraries and Patent Offices of the UK, Germany, the Netherlands, and, we suppose, Italy, where they have remained available ever since.
There used to be explicit "time bar" rules for excluding prior art - for example, the UK had a 50-year time bar on citation of earlier patents (s50(1)(a) of the Patents Act 1949) and, I believe, the Benelux design law excluded designs more than a century old.  There isn't anything explicit in the current EU design laws, but the Commission commentaries on the draft laws did discuss excluding prior art which was only to be found in museums, or had otherwise disappeared from the market and the mind of the public.  But should exclusions of that type bite on patent publications which have always been available and which, thanks to the efforts of Google Patents and others, have now been resurrected on the Internet (somewhat in the manner of the Brazilian Temple)?  Our collective heart is with the design owners and the Milan Court, but our collective head is unpersuaded.  As to the principle, if the prior art is a knockout, why reward re-monopolising that which the public already had as of right? and as to the practicalities, where would the line be drawn - does prior art have to be as old as Methuselah to be excluded?  Oh for the wisdom of Solomon.

Statements of novelty

The ever-informative International Law Office newsletter carries a report by Lauren Eade and Lisa Lennon of Gilbert + Tobin on recent Australian case law, within which there is a useful discussion on Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2009] FCA 1163 that serves to illustrate the effect of a "Statement of Novelty".

The Australian Designs Act 1906 (now superseded but applicable to old designs) required a Statement of Novelty. In this respect it was the same as the UK design statutes (until the 2001 amendments which brought the UK Registered Designs Act 1949 into line with the new EU design law), and those of many other countries having a historical relationship with the UK. In the Designs Act 1906, “Statement of Novelty” was defined as "a statement relating to the representations of an article to which the design is applied that indicates those features of the representations in respect of which novelty or originality is claimed".

The general intention of a statement of novelty is to direct attention to particular aspects of a design registration, but its specific effects on validity and on scope of protection for infringement purposes have long been the subject of confusion. Very often, a Statement of Novelty would simply state that "The novelty resides in the shape and configuration [or pattern and ornament, or both] of article shown in the representations", but such statements could also be used to draw attention to particular parts of a design. For a fairly recent New Zealand case on wording and amending the Statement of Novelty, see AEP v Scholle IPONZ, 1/2002.

Chiropedic Bedding's design was for a single-sided 'posture top' mattress, incorporating a separate sprung section on top of the main body of a sprung mattress, and contained the following statement of novelty:

"Novelty is claimed in the shape and configuration of the upper layer of the mattress portion of the mattress and base as indicated by the beading as shown in the representations."

In the UK it was generally thought that, for validity purposes, the statement of novelty acts as a "disclaimer". That is to say, it acts as an admission that all other aspects of the design not mentioned in the statement are not novel. This was to lead to a catastrophe in the case of Evered & Co Ltd's Application (Design), 1961 RPC 105 (differing from older case law), in which an applicant filed two designs showing the same product but with different statements of novelty each directed to a different part - each denied the novelty of the other, so neither was valid.

After a detailed review of the Australian and UK authorities, the Federal Court in Chiropedic cited with approval the remarks of Slade LJ in Sommer Allibert (UK) Ltd v Flair Plastics Ltd [1987] RPC 599 to the effect that "While the court does not have to assume that it [the statement of novelty] is correct, it precludes the proprietor, who has obtained his registration on the grounds that certain features of the design give novelty to it, from thereafter denying their novelty and asserting their immateriality, so as to extend the scope of the protected design."

In considering the scope of the design for infringement purposes, UK case law wavered. Generally there could be no infringement if a competing design did not take the features referred to in the statement of novelty, as the remainder of the design, lacking novelty, could not be validly protected on its own. But the situation of a competing design which takes only the the features referred to in the statement of novelty and not the entirety of the design has been treated inconsistently. The UK case law (for example in Sommer Allibert) appeared to have reached a state where greater weight was attached to the features referred to in the statement of novelty, but the remainder of the design could not be ignored, though it was downplayed.

The question of the effect on infringement did not directly arise in Chiropedic, but the Federal Court in Chiropedic quoted paragraph 100 of the Australian Designs Law Review Committee Report (Report on the Law Relating to Designs, the "Franki Report") of February 1973 to the effect that "in testing the novelty and originality of the design, attention would be directed to the two front legs and that this feature of the design would be given particular weight in testing infringement, although an infringement could not be proved unless the relevant tests were satisfied in respect of the whole chair." This would seem to be broadly in line with the UK Court of Appeal in Sommer Allibert.

This case therefore usefully highlights the difference in effect between a "partial design" and a Statement of Novelty. The former defines the part of what is shown which is the subject of the design monopoly, under laws (such as the new EU law) which permit protection of the designs of parts of products.

By contrast, when the latter is used, it is the entire design of the product which is protected; under the old UK law, parts of products could not generally be registered in isolation and, according to the Evered case, a Statement of Novelty could not be used to achieve the same effect.

Egyptian Goddess clogs up the CAFC

Like 'em or loath 'em, those plastic clogs keep IP lawyers in business. In International Seaway Trading Corp. v. Walgreens Corp., No. 2009-1237 (Fed. Cir. December 17, 2009), the issue was validity of three US Design Patents Nos. D529,263, D545,032 and D545,033, which were held to have been anticipated by an earlier patent U.S. Design Patent No. D517,789 (assigned to, yes, you've guessed it, Crocs Inc.). The registered designs looked much like the prior art, except for the pattern on the soles.
The major issue on appeal was whether the first instance had been correct to apply the "ordinary observer" test (recently held by the CAFC in Egyptian Goddess to be applicable to infringement) to validity, as we have argued on this blog.
Pleasingly, the CAFC decided exactly that:
"In light of Supreme Court precedent and our precedent holding that the same tests must be applied to infringement and anticipation, and our holding in Egyptian Goddess that the ordinary observer test is the sole test for infringement, we now conclude that the ordinary observer test must logically be the sole test for anticipation as well. In doing so, we will prevent an inconsistency from developing between the infringement and anticipation analyses, and we will continue our well-established practice of maintaining identical tests for infringement and anticipation."
A secondary issue was whether the first instance had been correct to decide that
“the law requires a court to consider only those portions of the product that are visible during normal use, regardless of whether those portions are visible during the point of sale.”
The CAFC decided that they could not ignore the pattern on the soles, as this would not be visible in use. The CAFC held that this could not be ignored, as "use" included point of sale, at which the soles would be visible, and that previous case law requiring all features shown in a design patent to be considered was applicable. They therefore referred the case back for reconsideration of the effect of the difference in the soles on validity.
There was a minority partial dissent on one point from Judge Clevenger. He considered that the majority had created a rule allowing parts of the design to be ignored and allowing the district court on summary judgment to determine that "individual features of the design are insignificant from the point of view of the ordinary observer and should not be considered as part of the overall comparison."
We tend to think both sides have a point here. The issue isn't as simple as whether you should just allow or ignore features - a more sophisticated analysis would weight them, ignoring none but according less significance to some. So, for example, I have filed car designs which include a view of the underside of a car - but does anyone know or care what it looks like? (This is a rhetorical question, before all you car buffs reply!) Any thoughts from US readers?

This week - European CFI hears design appeal

Tomorrow Tuesday 19th January is the Hearing date for European Court of First Instance case T-153/08, Shenzhen Taiden v OHIM - Bosch Security Systems intervening. This is the second stage appeal on RCD 214903-0001, a conference call speakerphone. The design was upheld at first instance by the Invalidation Division of OHIM, but that decision was reversed on appeal, the Board of Appeal (in Decision R 1437/2006-3) taking a much broader view of the design freedom available to the designer of such products and hence finding the design too similar to the cited prior art. Since in Europe essentially the same test is applied for infringement as for validity, the CFI decision will affect both. Will they find the design valid (and consequently of narrow scope) or invalid (but potentially of broad scope)? Watch this space.

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.

X5 and CEO – Are they still riding side by side?

Design fetishists and car maniacs will certainly remember those puzzling news from Munich and Turin, with the Munich District Court (Landgericht München I) confirming a claim for design infringement raised by the famous – Munich based (!) – car factory BMW against the Chinese version of its X5 model called CEO, while the Turin District Court (Tribunale di Torino) had dismissed the very same claim against the very same contested design a few months earlier. The truth is that both courts addressed validity but draw deviating conclusions. While the Italian court found the ML novelty-destroying over the X5, the Munich judges did not. The defendant – the German importer – appealed to the Munich Appeal Court (Oberlandesgericht München). After a hearing on May 14, 2009, it took quite a while for the court but now the dismissal of the appeal has become public. Good news for BMW: X5 apparently does not infringe ML but CEO still infringes X5!
Since the first generation of the X5 is protected only by German national and corresponding Hague designs (not: Community designs), the Munich Appeal Court couldn’t render a Europe-wide ban on the CEO. Hence, BMW will have to go on a country-by-country ride and attack the CEO wherever a judge will be prepared to grant injunctive relief …

RCD invalidity through the cases: Rodinger writes

The September 2009 issue of the Journal of Intellectual Property Law & Practice (JIPLAP), published monthly by Oxford University Press, leads for the first time with an article on the validity of Community designs. Entitled "Community design invalidity: the issues, as viewed through the case law", it is authored by Pedro Rodinger (right) who is known to many readers of this weblog as Director of OHIM's Design Department. According to the article's abstract:

"Legal context: In 2003, Council Regulation 6/2002 on Community designs set in motion the Registered Community Design, an IP right that is relatively easy to obtain thanks to the fact that there is no ex-officio novelty examination and to the swift and fast registration procedure. According to the regulation, problems with conflicting design or other rights are solved after registration once they effectively occur. The Community legislator followed the wishes of the European industry and after more than 5 years of experience, the fairly low number of design invalidity claims seems to confirm that this decision was a good one.

Key points: So far, only six design invalidity cases have been presented to the CFI. The basic underlying concepts of the Community Design right are at the core of these cases: the concept of the informed user, the degree of freedom of the designer, the use of proofs, the conflict between designs and trade marks, etc.

Practical significance: The RCD being still a young right, the interpretation of these concepts is of utmost importance for practitioners. The article contributes to the general debate on interpretation".

It's a little-known fact that two members of the Class 99 squad-- David Musker and Jeremy Phillips -- are also members of the JIPLAP editorial team. If you are thinking of writing an article on design law and practice, whether scholarly or practical, please feel free to contact either of them with your ideas.

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.