Jiaquan Perspective丨The Law of Determination of Us Design Patent Infringement

Author: Lin Weifeng International Department

Introduction

This article will discuss the determination of patent infringement of designs in the United States based on U.S. case law and with reference to some judicial precedents and interpretations.

In the United States, design patents and invention patents and plant varieties constitute the three major types of patents, of which design is a patent that protects the unique decorative characteristics of the product. Infringement of a design patent is an infringement by a company or individual of the decorative features of a product protected by a design patent, and the definition of infringement is consistent with the provisions of 35 USC 271 in the U.S. Patent Act, that is, direct infringement and indirect infringement, of which indirect infringement is subdivided into induced infringement and joint infringement. However, 35 USC 271 does not specify how appearance infringement will be determined. This article will discuss the determination of patent infringement of designs in the United States based on U.S. case law and with reference to some judicial precedents and interpretations.

In fact, the criteria for determining design patent infringement in the United States are not permanent from beginning to end, and there have been several well-known cases in history that have had a profound impact on the determination of appearance infringement and even changed the criteria for determining appearance infringement.

The "ordinary observer" method

The traditional criteria for determining infringement of U.S. design patents (hereinafter referred to as "design patents") have existed for many years and were laid down in the judgment of the United States Supreme Court in Gorham Co. v. White, 81 U.S. 511 (1872).

From the perspective of an ordinary observer, given the same attention as a purchaser to observe a product complained of, if the patented design (i.e. the patented design, hereinafter referred to as the design) and the product complained of are substantially the same, i.e. they are similar enough to deceive or confuse the ordinary observer in order to induce him to purchase the product complained of and mistakenly believe that it is a design, the product complained of constitutes infringement of the design patent.

The "novelty" determination method

Subsequently, the Federal Circuit Court litton Systems, Inc. v. Whirlpool Corp. 728th F.2d 1423 (Fed. Cir. The judgment in 1984) elaborated a specific two-step determination method for the infringement of appearance patents:

"No matter how similar the two products appear, the product in question must reflect a different novelty from the existing product in the patented product so that a design patent is considered infringed."

That is to say, in order to identify infringement, when the court compares the similarities of two products through the perspective of an ordinary observer, it must also attribute the similarity to the novelty of the difference between the patented product and the prior art area."

Therefore, this method of determination is also known as the "novelty point" method, and its judgment on the basis of infringement of a design patent is:

1. From the perspective of an ordinary observer, observe whether the design and the alleged product are "substantially identical", and whether the similarity induces him to purchase the alleged product that is thought to be a patented design product;

2. Whether the product complained of has a "novelty" that distinguishes it from the prior art in the design.

"Ordinary observer + prior art" determination method

However, the "novelty point" decision was waived by the Federal Circuit in a court decision of September 22, 2008.

In Egyptian Goddess, Inc. v. Swisa, Inc., No. 543 F.3d 665, 678 (Fed. Cir. In 2008), the Federal Circuit held that the "novelty" method should no longer be used in the analysis of claims for design patents. The Federal Circuit held that the "ordinary observer" method should be the only determination to determine whether a design patent has been infringed.

According to the judgment, unless the defendant's product "presented" or "imitated" the design of the appearance patent, it would not constitute infringement.

The ordinary observer here, unlike the general consumer imagined in the determination of chinese appearance patent infringement, should be familiar with the existing design (which can be regarded as the prior art used to evaluate the novelty of the appearance patent).

However, the Federal Circuit has not completely shied away from considering prior art. The Federal Circuit noted that, while the product being sued and the design were not distinctly different, the question of whether the ordinary observer would consider the two designs to be substantially identical could be resolved based on the results of a simultaneous comparison of the design, the product in question, and the prior art.

Thus, the Egyptian Goddess decision brought with it an "improved ordinary observer" approach, also known as the "ordinary observer + prior art" approach, which may require the ordinary observer to be familiar with the prior art. "For hypothetical ordinary observers familiar with prior art, when there are many examples of similar prior art designs, differences between designs that may not be obvious in the abstract and the product being sued may become important." (Quoted from Smith v. Whitman).

As a result, the "improved ordinary observer" approach brought about by the Egyptian Goddess case has been applied to later Federal Circuit judgments. When the alleged product is so similar to the design that a purchaser familiar with the prior art is deceived by the similarity between the design and the product being sued, thereby inducing him to purchase a product that is supposed to be another design patent, the product is infringing the design patent.

The "ordinary observer + prior art" judgment method, in the actual judgment, can be simply understood as, from the perspective of ordinary observer observation, the design --- the product being sued ---- the existing design together, the product being sued is closer to the former is infringing, and the product being sued is closer to the latter is non-infringing.

Although this determination method is simple, in practice, it depends on the hypothetical ordinary observer judgment, which has a certain subjective judgment component; because it involves prior art, search work needs to be carried out; and according to U.S. Patent 35 USC 271, the application of patent law needs to be considered in conjunction with the application of patent law.

Under the "ordinary observer + prior art" rule of determination, the court generally adopts the following infringement analysis: interpretation of the patent right of the appearance patent, use of drawings to define the scope of protection and identify decorative features; analysis of the similarities between the product and design complained of; and further tripartite comparison of the design, prior art and the product sued in combination with prior art.

In general, first consider: (1) the decorative design of the patent, (2) the design present in the prior art, and (3) the product being sued, and then compare the three parties, if the product is more close to the prior art than the patent, then the likelihood of infringement is less likely. In other words, as with U.S. invention patents, the "relevant proximity" of prior art provides guidance for determining the scope of infringement protection for design patents.

The above is an introduction to the historical changes in the law of determination of design patent infringement in the United States, as well as the introduction of the current law of determination. Due to the impact of US precedents on existing laws, this article is for reference only, and in actual cases, it is also necessary for the agent to strive for the greatest interests of the client according to the specific circumstances of the case and pay close attention to the latest developments in the jurisprudence.

Lin Weifeng

International Manager

After joining Jiaquan, Mr. Lin Weifeng has been focusing on and excelling in patent applications in the fields of computer hardware and software, sensors, microelectronics, optoelectronics technology, etc., mainly responsible for foreign-related patent application agency, drafting, translation and reply to examination opinions, and providing consulting and search services for customers.

In 2017 and 2018, he represented JiaQuan in the activities related to the inta (International Trademark Association) Annual Conference.

In 2018, he went to Vivacqua Law Law in the United States to participate in a three-month patent practice training, mainly including the theory of US patent application, the practice of US patent application, the US patent litigation observation course, and the special course of the US Patent and Trademark Office, including patent application document drafting, claim writing, patent defense strategy and so on. Especially considering the various "water and soil dissatisfaction" of Chinese patents entering the US market, we specially studied the course of "Adaptive Modification of Chinese Patents Entering the United States".

Later, he was responsible for the training of Jiaquan foreign-related agents on U.S. patents, mainly including search, drafting, translation, defense, infringement analysis, rights protection litigation, etc. in U.S. patent practice, and was also responsible for imparting knowledge of business etiquette, oral communication, written communication, etc., and further expanding the basic knowledge and basic experience obtained by foreign-related agents in China.

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