Design patents protect the ornamental design of a functional item, ensuring that the unique visual characteristics of a product are not copied by competitors. However, disputes often arise when companies produce similar-looking products, leading to potential design patent infringement cases.
Understanding the key tests used to determine infringement, the concept of substantial similarity, and strategies to avoid legal issues is crucial for businesses and designers.
What Is Design Patent Infringement?
Design patent infringement occurs when an unauthorized party creates, uses, or sells a product that is substantially similar to a patented design. Unlike utility patents, which protect the functionality of an invention, design patents cover the ornamental and aesthetic aspects of a product.
The primary concern in design patent infringement cases is whether an ordinary observer would find the accused product indistinguishably similar to the patented design.
Legal Framework Governing Design Patent Infringement in U.S.
Section 289 of the U.S. Patent Act (35 U.S.C. § 289) provides an extra layer of protection for design patents. The law states that:
Whoever during the term of a patent for a design, without license of the owner,
(1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or
(2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.
Apple vs. Samsung: A Landmark Design Patent Infringement Case
One of the most well-known design patent infringement cases in history is Apple Inc. v. Samsung Electronics Co. (2016) This case set a major precedent in intellectual property law, particularly concerning design patents and damages.
Background of the Case
Apple sued Samsung, claiming that several Samsung smartphones copied key design elements of the iPhone. The disputed design patents included:
- A rectangular front face with rounded edges
- A grid of colorful icons on a black screen
A jury ruled in favor of Apple, finding that Samsung’s smartphones infringed Apple’s design patents. As a result, Apple was awarded $399 million in damages, an amount equal to Samsung’s entire profit from the infringing smartphones.
How the Court Ruled on Damages
Samsung argued that damages should be limited to the value of the specific components that copied Apple’s design, such as the front face or screen, rather than the total revenue from the entire smartphone. However, the Federal Circuit rejected this argument, stating that:
- The entire smartphone was considered the “article of manufacture” because the components were not sold separately to consumers.
- There was no legal requirement to limit damages only to the copied part of the product.
Key Takeaways from the Case
- Design patents protect the entire product, not just individual design elements.
- Companies that infringe on a design patent may be required to pay total profits from the sale of the infringing product.
- This case reinforced the importance of intellectual property protection in the tech industry.
Design Patent Infringement Standard
The standard for determining design patent infringement is known as the “ordinary observer” test. This test asks whether an ordinary observer, familiar with the prior art, would be deceived into thinking the accused design is the same as the patented design when both are seen side by side.
In other words, if an ordinary person would be unable to distinguish between the two designs, then infringement has likely occurred. This test was established by the Supreme Court in the 1872 case of Gorham v. White.
What Is the Design Patent Infringement Test?
To assess whether design patent infringement has occurred, courts primarily rely on the Ordinary Observer Test, but other tests have also evolved over time.
“Ordinary Observer Test” in Design Patent Infringement
The Ordinary Observer Test was established in Gorham Co. v. White (1871). According to this test, an infringement occurs if an ordinary observer, familiar with the prior art, would find the accused design and the patented design substantially similar enough to cause confusion.
Who Is Considered an Ordinary Observer in Design Patent Infringement?
An ordinary observer is typically a regular consumer or purchaser of the product type in question. This means the court evaluates whether an average buyer, rather than an industry expert, would find the two designs confusingly similar.
Other Tests Considered by U.S. Courts
In addition to the ordinary observer test, U.S. courts have also considered other tests for determining design patent infringement over the years. Here are a few notable ones:
Point of Novelty Test:
This test, used before the Egyptian Goddess, Inc. v. Swisa, Inc. case, required that the accused design must appropriate the novelty in the patented design that distinguishes it from the prior art. However, this test was abandoned by the Federal Circuit in 2008. They found it to be inconsistent with the Supreme Court’s guidance in Gorham Co. v. White and determined it was too narrow.
Three-Way Visual Comparison Test:
In this test, the patented design is placed on one side, the accused design in the middle, and prior art designs on the other side.
If the accused design resembles the patented design more than the prior art, it may be considered infringing. This method helps identify potential design infringements clearly and visually.
For example, if a patented chair design with a unique curved backrest and leg shapes is compared to an accused chair design with similar features, the test helps to see if an ordinary observer would find them too similar. This process is crucial in patent litigation to protect unique design patents.
Non-Trivial Advance Test:
This test considers whether the combination of various design elements used in the design could be taken as a point of novelty.
This test, used in conjunction with the ordinary observer test, focuses on whether the differences between the patented design and the prior art are significant and not merely trivial.
What Does "Substantially Similar" Mean in Design Patent Infringement?
A key factor in design patent infringement is substantial similarity. The accused design does not need to be an exact replica; rather, it must create a visual impression that is so similar that an ordinary observer would have difficulty distinguishing between the two designs. Factors influencing substantial similarity include:
Overall Appearance: Courts examine the shape, proportions, and ornamental features.
Functionality vs. Aesthetics: Design patents protect non-functional aspects, so similarities in ornamental features weigh heavily.
Prior Art Consideration: The existence of similar designs in the industry may impact the determination of substantial similarity.
What Design Differences Do Not Qualify as Substantially Similar?
Not all differences in design help avoid infringement. Courts generally consider modifications that are minor or insignificant as insufficient to avoid infringement. Some factors that do not qualify as substantially different include:
- Changes in size or proportion that do not affect the overall appearance.
- Minor decorative elements that do not alter the essential look.
- Different materials used in production unless they change the visual impression significantly.
- Internal or hidden features that do not affect the external appearance.
Can You Modify a Design to Avoid Patent Infringement?
One relevant landmark case is Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950). This case established the “doctrine of equivalents,” which states that a product can still infringe a patent even if it doesn’t literally copy every element of the patent claims, as long as it performs substantially the same function in substantially the same way to obtain the same result.
Avoiding Patent Infringement
To avoid patent infringement, you need to carefully analyze the claims of the existing patent and design your product so that it does not fall within the scope of those claims, either literally or under the doctrine of equivalents. This may involve:
- Omitting elements: If the patent claims a combination of elements, you may be able to avoid infringement by omitting one or more of those elements from your design.
- Substituting elements: You may be able to substitute different elements that perform the same function in a substantially different way.
- Adding elements: In some cases, adding new elements to your design may be enough to distinguish it from the patented invention.
Important Considerations
- Patent claims: The specific wording of the patent claims is crucial in determining the scope of patent protection.
- Doctrine of equivalents: Even if your design doesn’t literally infringe the patent claims, it may still infringe under the doctrine of equivalents if it performs substantially the same function in substantially the same way.
- Legal advice: It is always best to consult with a patent attorney to get a legal opinion on whether your design avoids patent infringement.
Conclusion
Design patent infringement is a complex issue that requires careful analysis of similarities between products. Courts use the Ordinary Observer Test and consider substantial similarity to determine whether infringement has occurred. Businesses can minimize risk by modifying designs, conducting thorough patent searches, and consulting legal professionals. Understanding these principles helps companies navigate the competitive marketplace while respecting intellectual property laws.
Disclaimer: This article is based on thorough research and the author’s expertise. While every effort has been made to ensure the accuracy and reliability of the information provided, it is not intended to substitute for professional legal advice. The author is not liable for any reliance on this information. For specific legal concerns, please seek professional counsel.
