Nike Sues WalMart on Design Patents
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Written by Gene Quinn President & Founder of IPWatchdog, Inc. Patent Attorney, Reg. No. 44,294 Posted: October 16, 2008 @ 4:45 pm Page viewed 3,958 times 
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The Wall Street Journal Law Blog is reporting today that Nike has sued WalMart alleging design patent infringement. The patents in question are US Design Patent 498,914 and US Design Patent 499,248, both titled Portion of a shoe midsole.
Those who are familiar with IPWatchdog.com may know that for years I have counseled individuals to beware of design patents because they are quite weak, although very easy to get. This advise now needs to be completely rethought and probably completely scrapped. The United States Court of Appeals for the Federal Circuit, the chief patent law court in the US, recently issued a decision in Egyptian Goddess, Inc. v. Torkiya that requires us to reevaluate the strength and importance of design patents. I suspect this case is exactly why Nike decided to sue WalMart. Of course the timing of the Nike lawsuit may be mere coincidence, but the fact that it comes only weeks after this monumental decision from the Federal Circuit at least suggests that there is a strong perception that design patents are now more meaningful and indeed stronger.
Design Patent Application Filed for $1,600
Zies Widerman & Malek | Includes Attorneys Fees, Drawings & Filing Fees
As my earlier post on this case explained, the law has now significantly changed insofar as proving infringement. The law now says that there will be design patent infringement if an ordinary observer would see the accused device as a copy or colorable imitation of the patented device. We will have to see how this test develops moving forward, but it does clearly seem to make it easier to demonstrate that there has been an infringement of a design patent.
It is important to understand, however, that design patents do still have important limitations. A design patent will cover only appearance and not the function of a device. Nevertheless, given that design patents are relatively easy to get and infringement is now easier to prove obtaining a design patent should be at least considered in all situations.
With design patent infringement not being based upon the ordinary observer test it would seem that Nike has a pretty good case against WalMart. Take a look at the images below comparing D498,914 and D499,248 with the allegedly infringing WalMart sneaker.
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Unfortunately, this case only addresses the litigation aspect of design patents. I suspect that the PTO will take a lead from this case and issue more obviousness rejections based on a new test wherein the design is not patentable should the examiner find that an ordinary observer could see the device as a copy or colorable imitation of prior art. What does “colorable imitation” mean and how will that be tested? We’ll see.
There is a simple way for Walmart to resolve this. Buy Nike.
it does clearly seem to make it easier to demonstrate that there has been an infringement of a design patent.