Design Patent Litigation: Advocacy Through Visual Communication

Central to any patent dispute is the portrayal of the claimed invention. Whether asserting patent rights or defending against a charge of infringement, successful litigants frame the claimed invention strategically and with great care. Put simply, the way the invention is portrayed in court proceedings can and will influence the outcome.

Just how to best communicate an invention depends on its nature. For example, the complexity of the underlying technology will dictate the way inventions are presented in utility patent litigations. The presentation of a claimed invention is quite different, however, when litigating design patents because they protect ornamental aspects of products as opposed to their functional attributes. Unlike utility patents, design patents define the claimed invention using visual depictions―they protect visual design elements and communicate the scope of that protection through drawings instead of words. This visual aspect of design patents presents both challenges and opportunities in the litigation context. Successful litigants use this visual aspect to their advantage when educating judges and juries about the claimed design, when establishing a favorable claim interpretation, and when communicating about evidence supporting or refuting infringement and invalidity allegations. This article suggests strategies that are especially beneficial when litigating design patent disputes.

Design Patent Infringement Analysis is Unique

It is helpful to understand and appreciate how design patents differ from utility patents. Design patent claims encompass the drawings in the patent. This is a visual approach, in contrast to the words used to define the scope of a claimed invention in a utility patent. Unlike utility patents―the wordy claims of which must be interpreted and compared to the technology accused of infringement―design patents include few if any words to interpret. The determination of infringement is instead left almost entirely to a visual comparison of the claimed design and the product accused of infringement.

This visual comparison is typically a three-way comparison. Generally, the question of design patent infringement turns on whether an ordinary observer would be deceived by the sameness of the patented and accused designs such that he or she would purchase one believing it to be the other, after giving the usual attention of a purchaser. If so, the design patent is infringed. This “ordinary observer test” considers the differences between the patented and accused designs in the context of the prior art―the ordinary observer is thus assumed to be familiar with prior designs. In other words, the infringement analysis requires a three-way comparison among the accused product, the claimed design, and prior art designs. This unique, three-way visual comparison distinguishes design patent infringement analysis from that done for utility patents. 

Educating the Judge

This three-way analysis calls for strategic use of images to educate the judge about the accused, claimed, and prior art designs. It is also important to use images to illustrate the proper interpretation of a design patent claim, including the identification of design features that have been claimed or disclaimed by the selective use of broken and solid lines in design patent drawings.

Images prepared to educate the judge on these points should be “tested” and refined before use. Informal or formal focus groups are beneficially used to test images for their impact and effectiveness in communicating the intended legal proposition. Focus groups also help coordinate the use of presentation software such as PowerPoint® presentation slides and presentation tools such as Elmo™ projectors. It is especially important in court presentations to maintain flexibility to navigate among images in response to a judge’s questions. This is, of course, an important consideration in all patent litigations, but it is especially critical when comparing images in design patent infringement analyses.

Educating the Jury

To arrive at a reasoned conclusion, a jury must understand the infringement analysis and the visual comparison required to determine whether infringement of a design patent has occurred. It must also understand the framework of the visual comparison to be made among the accused, claimed, and prior art designs.

Model jury instructions are available from various sources and district courts for use in utility patent litigations. There is a much more limited selection of model jury instructions for design patent cases. The Design Rights Committee of the Intellectual Property Owners Association drafted Model Design Patent Jury Instructions, which are available for general guidance, but have not yet been endorsed through widespread use. Also, a few district courts, such as the District of Delaware, include design patent instructions in their sample jury instructions. Jury instructions for design patent cases differ substantially from those for utility patent cases because of the different patent infringement analyses and the visual aspect of design patents.

Use of Experts

Selecting and presenting the right expert in any patent litigation are important to the outcome of the case. There are, however, special considerations for experts in design patent litigations. The testimony of an industry expert may be introduced―for example, as evidence as to whether consumers would be deceived by an accused product―if such testimony is supported by survey results, interviews, or other factual data. Without supporting data, however, testimony of an industry expert may be held to lack sufficient foundation and may not withstand a challenge to its admissibility.

The testimony of an industrial design expert is often beneficial to distinguish design elements that are ornamental from those that are functional. This is especially important in view of recent court decisions discounting similarities between accused and claimed designs when those similarities relate to functional features. An industrial design expert can help distinguish the ornamental features from functional design elements, thus providing a framework for identifying similarities or differences between accused and claimed designs.

Although courts do not always admit testimony of legal experts, such testimony may be useful for opining on the effect of aspects of the specification or drawings on the scope of a design claim. For example, many design patents employ broken lines, mirror images, and other tools to communicate the scope of the design patent right. A legal expert may also help interpret the history of a design patent as the underlying application was examined by the Patent Office. That history may have a significant impact on the scope of the resulting design patent claim.

Use of Survey Evidence

There are very few cases governing the standards and use of surveys in design patent cases. Nevertheless, there are several important factors to consider when determining whether a survey of “ordinary observers” is adequate.

Similar to surveys used for trademark infringement litigations, for example, it is important to consider the proper “universe” for the survey: Is the survey’s sample size large enough? It is also important for surveys to address key points appropriately: Does the survey address the question of whether any “deception” caused by an accused product stems from claimed design features as opposed to other factors? Is the wording of the survey appropriate without leading the participant? Does the survey show participants the prior art in appropriate cases so that they can consider the question of deception in the context of the prior art?

If used correctly, a survey can be a powerful tool. Especially in the uniquely visual realm of design patent litigation, survey evidence can help ensure a favorable outcome. 

Claim Interpretation

The visual aspect of design patents also impacts claim interpretation. Courts have moved away from the use of words in construing the claim of a design patent. In the past, it had become increasingly common for courts to interpret a design patent claim by converting the images from design patent drawings into a verbal description. More recently, the trend has been to discourage the use of verbal descriptions, and at least one judge has indicated that verbal claim constructions in design patent litigations are more easily reversed when challenged on appeal.

In light of recent cases addressing design patent infringement, successful litigants will continue to focus on the visual aspect of design patents when educating judges and juries, establishing favorable claim interpretations, and introducing evidence supporting or defending against infringement allegations. This is one area where a picture is truly worth a thousand words.

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