Posts Tagged: "design patents"

CAFC Says District Court Correctly Invalidated Design Patent

On June 22, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the Southern District of California granting summary judgment in favor of Golden Eye Media USA Inc (GEM) over Evo Lifestyle Products Limited, formerly known as Trolley Bags UK Ltd (TB UK) after holding TB UK’s U.S. Design Patent No. D779,828 (‘828 patent) invalid. The district court held the ‘828 patent to be invalid for reasons of functionality and obviousness.

Hague in Force in China: Tips for Choosing the Hague Agreement or Paris Convention to File Design Patents in China

The Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”) will enter into force in China next week, on May 5. Together with the original Paris Convention approach, there will now be two different options for filing design patents in China: the Hague system (designated extension) and the Paris Convention (direct entry). Based on our experience and analysis of the relevant regulations, we have the following preliminary suggestions on how foreign applicants should choose to enter China.

Understanding the Importance of Words in Design Patents

Is the scope of a design patent determined by the figures alone? Two recent Federal Circuit decisions highlight that the words describing the article of manufacture in the title and claims can indeed limit the scope and enforceability of a design patent. In particular, the title and claims of the design patent contain important information that provide a more accurate and predictable notice of what is and is not protected by the design patent. Thus, the title and the claims of a design patent are particularly relevant to the scope of the patent—both for procurement and enforcement.

IP Protects JLTV Despite Sale of Technical Data Package

Oshkosh Corporation has run through a $6.7 billion contract to produce the first 17,000 Joint Light Tactical Vehicles (JLTVs) in a Department of Defense (DOD) program that could produce 55,000 vehicles for the Army and Marines. Oshkosh won the low-rate initial production (LRIP) contract in 2015 to be the sole manufacturer of JLTVs by submitting an original, technologically superior design in a litigated competition with other, arguably, more dominant players in the defense market. Bids for the contract to produce the next tranche of over 15,000 vehicles are due later this year. Competitors for the $7.3 billion recompete contract, including GM Defense, AM General and Navistar, will have access to the proprietary design of the JLTV that Oshkosh used to win the LRIP contract. The U.S. Government has made available to interested bidders a Technical Data Package (TDP) covering the JLTV after purchasing an option in 2016. Oshkosh, however, maintains an intellectual property (IP) portfolio that could counter the sale of the TDP.

In re Surgisil: Boon, Burden, or Mixed Bag for Patent Applicants and Patentees?

Last week, the Federal Circuit Court reversed the Patent Trial and Appeal Board decision in In re Surgisil, L.L.P., overturning the Board’s ruling that a design for a rolled-paper art tool for blending anticipated Surgisil’s (Applicant) claimed lip implant. In re Surgisil, L.L.P., No. 2020-1940, 2021 WL 4515275 (Fed. Cir. Oct. 4, 2021). Although the “stump” art tool cited as prior art in Surgisil resembled Applicant’s lip implant (see below), the Federal Circuit found that Applicant’s “claim is limited to lip implants and does not cover other articles of manufacture.” From this finding, the Surgisil court appears to extrapolate a symmetry by which a design for an artist’s stump is both ineligible for citation against Applicant’s lip implant in patent prosecution and also not covered in a putative enforcement of Applicant’s design.