Visitor Put up by Prof. Burstein: Design patents: Line drawing & Locarno

By Sarah Burstein, Professor of Legislation at Suffolk College Legislation Faculty.

Columbia Sportswear North America, Inc. v. Seirus Progressive Equipment, Inc., 21-2299 (submitted however not determined) (oral argument recording obtainable here)

The Federal Circuit heard oral arguments yesterday within the second spherical of Columbia v. Seirus. (Prior Patently-O protection of this attraction is out there right here.) My 2015 article, The Patented Design, was talked about a number of occasions throughout the argument.

In that article, I argued {that a} design patent’s scope ought to be restricted to the design as utilized to a particular sort of product. In making that argument, I acknowledged that this strategy may create some line-drawing issues, together with the kind which have arisen in Columbia v. Seirus. I urged 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 system ought to be thought of the identical sort of product. Courts have been tasked with figuring out which merchandise are and should not the identical “sort” of product within the trademark context; there isn’t any apparent motive 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” could possibly be outlined to map onto Locarno sub-classes. For instance, Locarno Class 10 consists of subclasses for “Clocks and Alarm Clocks,” “Watches and Wrist Watches,” and “Different Time-Measuring Devices.” The Locarno classification system shouldn’t be excellent for this use however it could present a second-best answer if judicial frequent regulation 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 similar common sort of article.

I additionally urged that the product sort could possibly be decided just about Locarno sub-classes. How may that work in apply?

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 here 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), may typically 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, should you look nearer on the full Locarno Classification, subclass 05-05 particularly consists of ID No. 100480, “Insulating materials.”)

So which bucket would the D’093 slot in greatest? The place classification is disputed, the burden of persuasion ought to be on whichever celebration needs to show one thing is similar sort of product.

For infringement, then, the patent proprietor ought to should show the accused product is similar sort as what’s claimed. For comparability prior artwork, the accused infringer ought to should show the reference is the right sort. (It’s because using the prior artwork in evaluating infringement is a one-way ratchet; it will probably solely be used to slim 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 industrial embodiments, together with info 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 prone to come up on the Markman stage or, as in Columbia v. Seirus, in motions in limine. This isn’t the type of credibility or historical-facts dedication that we usually go away to juries. Certainly, it’s troublesome to think about a strategy to successfully instruct juries on this situation with out injecting undue confusion into the infringement evaluation.