Design patents a district court decision that awarded a reasonable royalty after the jury indicated that Systems’ profits were zero. The court remanded the case for a proper damages analysis, stating that “only where § 289 damages are not sought, or are less than would be recoverable under § 284, is an award of § 284 damages appropriate”.7 This case illustrates the importance of evaluating all possible damages options for design patent infringement. Design patent claims are limited to ornamental aspects of the design only Last August, in Ethicon Endo-Surgery v Covidien, the CAFC reversed a finding of invalidity and upheld a grant of no infringement because the design and accused product were plainly dissimilar.8 This case turned on what aspects of the claimed design are ornamental versus functional, which is important because the scope of design patent’s claim is limited to only ornamental aspects of the design. Also, alternative designs are considered in the analysis because if alternative designs achieve the same function for the same article to which a design is applied, then the design is likely ornamental. See below. Patent No D661,804, Fig 1 Takeaways At half the filing cost of utility patents and with no maintenance fees, design patents are considerably cheaper, typically issue faster – with a 15-month average pendency – and have fewer prior art rejections during examination than utility patents.

Further, design patents have a unique damages provision available that offers an option in addition to ‘traditional’ patent damages, as highlighted by the Apple and Nordock cases. Also, as shown in Ethicon, determining the claim scope of design patents uses the unique test of determining ornamentality versus functionality. “At half the filing cost of utility patents and with no maintenance fees, design patents are considerably cheaper, typically issue faster and have fewer prior art rejections during examination than utility patents.” Key takeaways are that design patents are worth considering for patent protection and that when asserting a design patent all damages options should be considered to maximise potential recovery. Further, it is important to understand design patent claim scope analysis when assessing infringement and invalidity. Covidien’s accused product The Ethicon decision provided two additional holdings.

First, it clarified the Egyptian Goddess rule9 regarding comparison to the prior art. Ethicon argued that its claimed designs and the accused products were not plainly dissimilar and that a comparison to the prior art was required. The Federal Circuit noted that “comparing the claimed and accused designs with the prior art is beneficial only when the claimed and accused designs are not plainly dissimilar” and “because the district court found the non-functional, ornamental aspects of the claimed and accused designs to be plainly dissimilar, it did not need to compare the claimed and accused designs with the prior art”.

Secondly, the court clarified that an ordinary observer is not an expert but “one of ‘ordinary acuteness’ who is a ‘principal purchaser’ of the underlying articles with the claimed design”. Ethicon argued that an ordinary observer is a surgeon using shears, but the district court found that it was the entity managing the surgical device purchases. On appeal, the Federal Circuit found that Ethicon did not provide evidence regarding how the infringement analysis would differ if a surgeon were the ordinary observer and then declined to further elaborate on the proper definition. Does selling products from third-party vendors give rise to infringement liability? The district court decision in Milo & Gabby v Amazon.com focuses on infringement related to selling products on the internet.10 This is an important topic in today’s world of e-commerce and is applicable both to design patents (as in this case) and utility patents.

The plaintiff made a direct infringement allegation against Amazon serving as an internet retail service website that enabled a third-party vendor to sell and distribute the accused products. The court denied summary judgment of no infringement because it found material facts in dispute, namely that the website displays the price and allows a buyer to choose www.intellectualpropertymagazine.com a quantity and conclude the purchase.11 It remains to be seen whether Amazon’s selling of products from third-party providers can directly infringe a design patent within the meaning of 35 USC § 271. Footnotes 1. No IPR2013-00072 (Paper No. 28). 2.  uv N’ Care Ltd v Munchkin, Inc, 599 Fed App’x 958 (Fed Cir 2015). L 3.  IPR2013-00072 (Paper No 28) at 8. No 4.  at 14 (citing 121 F3d 691, 692 (Fed Cir 1997)). Id 5.  Source: Docket Navigator Analytics, www.docketnavigator.com, accessed 31 Dec 2015. 6.  786 F3d 983, 1001 (Fed Cir 2015). 7. 803 F3d 1344, 1357 (Fed Cir 2015). 8.  796 F3d 1312, 1314 (Fed Cir 2015). 9. In Egyptian Goddess, Inc v Swisa, Inc, the CAFC clarified the standards for design patent infringement. 10.  ase No C13-1932RSM, 2015 US Dist.

LEXIS 92890, at *4 (WD Wash 16 July C 2015). 11. Id at *34-*35. Authors Mandy Adams and Steven Wood are associates at Hunton & Williams in Washington, DC. This article presents the views of the authors and does not necessarily reflect those of Hunton & Williams or its clients. The information presented is for general information and education purposes. No legal advice is intended to be conveyed; readers should consult with legal counsel with respect to any legal advice they require related to the subject matter of the article. April 2016 Intellectual Property Magazine 49 .