Director's Blog: the latest from USPTO leadership

« Ex Parte Frye: BPAI’... | Blog homepage | Working Through... »
Wednesday Mar 03, 2010

Good News for Design Patent Holders

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos


Now here’s some good news for patent holders, and especially for design patent holders.  Last week, the CAFC reversed an ITC decision holding that none of the interveners infringed U.S. Patent No. D517,789.  Crocs, Inc. v. International Trade Comm’n, __ F.3d __ (Fed. Cir. 2010)(Rader, J.).  The ‘789 design patent is for the familiar Crocs foam footwear.  


Judge Rader, writing for the court, drove home the point that minor differences between a patented design and an accused article’s design cannot prevent a finding of infringement.  The court again cautioned trial courts about excessive reliance on detailed verbal description of design claims, and referenced the Manual of Patent Examining Procedure for the proposition that “the illustration in the drawing views is its own best description.”  The court pointed out that the verbal claim construction had focused on particular features of the claimed design, and hence had led the Commission away from considering the claimed design as a whole.  The court then reiterated that in applying the ordinary observer test for infringement recently clarified in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), the emphasis must be on the design as a whole.  By performing side-by-side comparisons of the drawings of the ‘789 patent design and the accused products, the court concluded that “an ordinary observer, familiar with the prior art designs, would be deceived into believing the accused products are the same as the patented design.”  This decision raises the value of innovation protected by patents and shows that the Federal Circuit is behind IP owners who put their confidence in our patent system.


Design patent protection is increasingly viewed as strategically important for innovators small and large because it is an efficient and cost effective way to give an owner the right to prevent others from making, using, or selling a product that so resembles the patented product.  In the last five years, the USPTO processed more than 25,000 design patent applications per year.   


In a win-win for innovators, the Crocs court also reversed the Commission’s ruling of invalidity of a related utility Patent No. 6,993,858 and clarified the obviousness standard.  It found that the ‘858 patent would not have been obvious because it is not simply a combination of elements found in the prior art, which would actually teach away from the use of foam straps.  Citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the court further stated that even if the ‘858 patent were a combination of known elements, “it yields more than predictable results.”


What are your thoughts on this decision and the direction of design patent law?


Just wanted to write that the Director's Forum is a great idea.

Posted by Matthew Dowd on March 03, 2010 at 10:41 AM EST #

I'm for any decision that results in fewer companies making footwear that look like Crocs. Ideally, the number should be zero.

Posted by Rajiv on March 03, 2010 at 03:27 PM EST #

Post a Comment:
Comments are closed for this entry.