IP Chat Channel – Design Patents
Webinars are listed in chronological order with the most recent at the top of the page.
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Design Patents: Future of Damages After Apple v. SamsungWebinar Date: 01/12/2017
In its recent opinion, the U.S. Supreme Court answered this question posed by Samsung: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?” The reply of the unanimous court, in an opinion written by Judge Sotomayor: “The term ‘article of manufacture’ is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not.” That answer rejects the Federal Circuit’s longstanding interpretation of Section 289.
However, experts say the Supreme Court’s opinion raises many more questions. The Federal Circuit must now create a test that will allow a jury to determine whether the “article of manufacture” covered by a design patent is the entire product or a component, and what that component is. For now, it is not clear whether the patent owner or the defendant bears the burden of proof. Then, it will be up to a judge to apportion to the component some part of the infringer’s entire profits on the product. Our panel — a design patent litigator, a damages expert, and a law professor specializing in patent damages — will discuss how the law of design patent damages might evolve, and see what the options might mean applied to cases currently being litigated, such as Apple v. Samsung and Nordock v. Systems.
- Prof. Thomas Cotter, University of Minnesota Law School
- Dawn Hall, FTI Consulting
- Richard Stockton, Banner & Witcoff, Ltd.
Design Patents: International Filing StrategiesWebinar Date: 11/15/2016
More companies these days feel the need for design patent protection in several countries outside the U.S. But complications are plentiful, pitfalls are many, and international harmonization efforts may offer false security. Our panel includes an in-house counsel with experience managing design patent prosecution in more than 15 countries plus the European Community, and two international design patent prosecution veterans. They will examine a number of issues that should be addressed in preparing an effective international filing strategy, including:
- The significance of the “absolute novelty” standard in nations including China. No grace period means that any disclosure by the inventor or designer anywhere in the world, including in consumer testing and trade shows, is considered prior art before filing;
- Differences in rules regarding partial designs, where only a particular feature is claimed;
- Limits in enforceability, such as the “must fit, must match” and “hidden in use” exclusions;
- Balancing cost and coverage.
- John Cheek, Caterpillar, Inc.
- Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- Robert Katz, Banner & Witcoff, Ltd.
After Brexit: European Patents and Design RightsWebinar Date: 07/14/2016
Last month’s vote by the United Kingdom to leave the European Union raises many uncertainties for owners of intellectual property in Europe. These two webinars will help owners of patents and trademarks to understand these uncertainties, to recognize their options, and to take needed steps. Patent owners, for instance, need to be clear on the independence of the European Patent Office from the EU and will want to understand the dynamics that will determine whether the long-gestating United Patent Court ever comes to life. Trademark owners doing business in the U.K. will want to start thinking about how to protect assets after European Community Designs (ECDs) and European Union Trademarks (EUTMs) no longer are valid there. Each of our panels includes an in-house attorney at a U.S. multinational and two law firm attorneys, one based in Munich and one in London.
Paul Coletti, Johnson & Johnson
John Conroy, Fish & Richardson
Rowan Freeland, Simmons & Simmons
European Trademarks, Designs and IP TransactionsWebinar Date: 07/13/2016
Last month’s vote by the United Kingdom to leave the European Union raises many uncertainties for owners of intellectual property in Europe. This webinar will help owners of trademarks to understand these uncertainties, to recognize their options, and to take needed steps. Trademark owners doing business in the U.K. will want to start thinking about how to protect assets after European Community Designs (ECDs) and European Union Trademarks (EUTMs) no longer are valid there. They also will want to review IP agreements for clauses defining territorial scope and draft future agreements with an eye to new possibilities, such as other countries leaving the EU. The panel includes an in-house attorney at a U.S. multinational and two law firm attorneys, one based in Munich and one in London.
Jonathan Day, Carpmaels & Ransford
Jake Feldman, Johnson & Johnson
Jan Zecher, Fish & Richardson
Design Patent Damages: The Law As It Is TodayWebinar Date: 01/28/2016
When the Federal Circuit last summer rejected a request for a rehearing en banc from Samsung on the damages awarded to Apple for infringement of three of its design patents, it reaffirmed what experts in design patents already knew: With design patents, the infringer’s damages are its entire profits from the article of manufacture. That formula stemmed from design patents’ has historically been used as a weapon in the fight against counterfeits and knock-offs. But the ruling in Apple v. Samsung, based on a straightforward reading of Section 289 of the Patent Act, was an eye opener even for many patent law veterans outside the design space. The Federal Circuit reiterated its stance again in September in Nordock v. Systems, when it remanded a patent design case because the lower court’s damages calculation shortchanged the plaintiff.
Our panel brings together two design-patent veterans with a damages expert to discuss the implications on design patent prosecution and litigation of the increased consciousness regarding design patent damages. Is this just a blip or will it lead to an increase in design patent litigation and prosecution, as some experts predict? How will courts define “the article of manufacture”? What are the limitations of design patent enforcement despite the possibility of 289 damages? The panelists will also consider Samsung’s certiorari petition to the U.S. Supreme Court.
Alan Cox, NERA Economic Consulting
Robert Katz, Banner & Witcoff
Damian Porcari, Ford Global Technologies LLC
3-D Printing Advanced Topics for Patent Lawyers: Repair, Reconstruction, Exhaustion, InducementWebinar Date: 08/27/2015
Lawyers who want to give good advice regarding the disruptive technology of 3-D printing need to refresh their understanding of many areas of case law and rethink how it all fits together. For instance, companies with more than one business model – eg, those who both sell repair parts for machines they manufacture and also want to repair machines bought from others – may be subject to competing imperatives.
Our panel includes an IP lawyer at a major multinational manufacturer, a design patent specialist, and a patent litigator. Through the lens of 3-D printing, they will reconsider case law and current litigation involving repair, reconstruction, and exhaustion, including the pending en banc Federal Circuit Lexmark case; the pending Federal Circuit case on whether the International Trade Commission has jurisdiction over imports of digital files; and the issues of inducing and contributory infringement.
John Cheek, Caterpillar Inc.
Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Bryan Vogel, Robins Kaplan LLP
International Patent Filing: Best PracticesWebinar Date: 06/25/2015
It’s a big world out there for valuable inventions that could benefit from patent protection. This webinar will provide expert guidance on where to file foreign patent applications and how. Topics include:
- Factors to consider when deciding whether to file international patents;
- Comparisons between PCT, EPO and direct filing options;
- How to reduce costs;
- Hidden landmines, including the requirement of foreign filing waivers when inventors reside in certain countries; and
- What’s new, including use of the Hague Agreement for design patents; will Austria become the “Delaware” of the Unitary Patent in Europe?
Philip Cupitt, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Michael Gnibus, General Electric Co.
Robert Siminski, Harness, Dickey & Pierce, P.L.C.
Safeguarding GUIs: Best Practices Using Multiple Layers of IP, including Design Patents, Utility Patents, Copyright and Trade DressWebinar Date: 04/29/2015
Protecting the IP of Graphical User Interfaces (GUI) is tricky – and crucial. Successful GUI is key to strategy at many corporations these days, as more manufactured products offer sophisticated digital features and connectivity through the Internet of Things. Our panelists — an attorney expert in design patents, an in-house lawyer who works to protect the inventions of an “experience design” team, and a software IP specialist — will discuss how best to protect GUIs using multiple layers of IP.
Design patents are certainly important, and have come to the fore recently because of Apple’s success in enforcing a GUI design patent against Samsung. But some sophisticated companies have actually backed off from filing design patents on GUI, concerned about how crowded the field is with prior art and how the quick pace of design changes during product development and even after launch make it necessary to file multiple applications to have any hope of a patent strong enough to enforce.
Utility patents protecting the functionality of GUI are facing their own challenges. A number of these patents have been invalidated in post-grant proceedings based on prior art. New patent applications face a higher hurdle because of Alice. Some experts wonder if copyright protection could fill the gap. Trade dress claims can be preempted by a registered copyright, but alone they may well be effective in protecting a GUI from copycats — if the GUI is already well-known and is associated by consumers with its particular source.
Michael Hsu, Adobe Systems Inc.
Robert Katz, Banner & Witcoff, Ltd.
Robert Lord, Osha Liang, LLP
Design Patents and Trade Dress: Significant Recent LitigationWebinar Date: 01/22/2014
Interest in design rights is at an all-time high thanks to their role in global smart phone and tablet litigation. The number of applications for design patents at the USPTO is growing rapidly. Jurisprudence for design rights continues to evolve, and the results of recent significant U.S. litigation should play a role in future litigation and patent prosecution strategy. Our panel will discuss:
- the Sixth Circuit decision in Groeneveld Transport v. Lubecore , which discusses the nonfunctionality requirement for trade dress protection
- the Federal Circuit decision in High Point Design v. Buyer’s Direct, which clarifies the design patent test for obviousness
- the PTAB’s decision not to grant a petition for inter partes review to ATAS, which was trying to invalidate a design patent for a building panel owned by Centria
- the recent Federal Circuit decision in Pacific Coast Marine v. Malibu Boats, holding that the principles of prosecution history estoppel apply to design patents.
- Tracy-Gene Durkin, Sterne, Kessler, Goldstein & Fox, PLLC
- Richard McKenna, Foley & Lardner, LLP
- John Cheek,Caterpillar Inc.
Design Patents, Trade Dress, Copyright and Utility Patents: How to Prosecute and Enforce Multiple Layers of IP ProtectionWebinar Date: 07/17/2013
A corporation or inventor with a potentially valuable product will often want to take a “belt-and-suspenders” approach to protecting intellectual property. Rather than rely only on one layer of IP protection, the owner will try to protect the same product with varying forms: eg, design and utility patents, trade dress protection, and/or copyright.
This webinar will discuss the opportunities and challenges of this strategy both in the U.S. and overseas. One primary opportunity is the possibility of extending protection beyond the “20 years from filing date” term of utility patents and “14 years from date of issue” term of design patents. Enforcement flexibility may also be a goal, eg, the ability to enforce trade dress remedies, set out in the Lanham Act, against a copycat product that doesn’t directly infringe a utility patent.
But practitioners must be careful not to let one form of IP protection negate another. In the 2001 U.S. Supreme Court decision TrafFix Devices. v. Marketing Displays, for instance, the court held that a functional design could not be trademarked, while the 2010 Federal Circuit decision in Richardson v. Stanley Works illustrated the dangers of incorporating functional elements in a design patent. Our panelists — an in-house counsel for a multinational consumer goods company and two law firm litigators — are experienced in the nuances of multiple forms of IP.
- Mark Charles, Procter & Gamble Co.
- John Froemming, Jones Day
- Richard Stockton, Banner & Witcoff, Ltd.
Design Patent Prosecution: Advanced TopicsWebinar Date: 05/23/2013
The number of applications for design patents at the USPTO is growing rapidly, with some of that increase coming from corporations and IP practitioners with relatively little experience with that form of IP protection. Design filings are expected to surge more after the U.S. joins the Hague Agreement, an international design filing treaty, later this year. Our panel, which includes a leading U.S. design patent practitioner, an in-house counsel at a corporation recognized as making effective use of design patents, and a USPTO design practice specialist, will offer useful advice on:
- USPTO’s view of common pitfalls in design patent prosecution
- In-house perspective on best practices for filing design patents
- Advanced technical prosecution techniques
- Recent design patent jurisprudence, including the U.S. Court of Appeals for the Federal Circuit’s opinion in In Re Owens and the USPTO’s first grant of an inter partes review of a design patent in Munchkin v. Luv n’ Care
- USPTO’s controversial proposed tightening of amendment and continuation practice based on insufficient written description support
- Christopher Carani, McAndrews, Held & Malloy, Ltd.
- Katie Maksym, Nike, Inc.
- Joel Sincavage, U.S. Patent & Trademark Office
3-D Printing: IP Challenges AheadWebinar Date: 03/25/2013
3D printing has burst into the public consciousness. Creating an object by layering thin layers of material, one on top of the other – “printing” in three dimensions – promises to deliver big gains in manufacturing efficiency with far less waste. It also has the potential to unleash creativity, allowing, for instance, the far more rapid and inexpensive creation of prototypes.But as the potential of 3D printing becomes more apparent, so does its potential to disrupt existing business models and legal frameworks. The looming analogy: the effect of the video recorder and digital files on the music, film and other media industries, still reeling from the impact of copying and low-cost distribution.The turbulent cultural and political history of the “copyright wars” to date is also sure to influence the evolution of 3D printing.This webinar will examine the challenges 3D printing poses to owners of IP, including patents, copyright, and trademarks.The panel includes an in-house patent counsel at a major international equipment company, a copyright attorney with specialized knowledge of open source software, and a public interest lawyer specializing in digital rights. Among the topics they will consider:
- How much patent infringement will take place thanks to 3D printing, and what efforts will patent owners take to enforce their patents as a result?
- Will 3D industry players, such as printer manufacturers, makers of scanners, and printing services, be found liable for inducement of infringement?
- How does copyright intersect with 3D printing and to what extent does the Digital Millennium Copyright Act apply?
- How will 3D printing affect the value of trademarks?
- John Cheek, Caterpillar Inc.
- Mark Radcliffe, DLA Piper
- Michael Weinberg, Public Knowledge
Design Patent Protection: An International Overview Including the Hague AgreementWebinar Date: 02/06/2013
Interest in design patents is at an all-time high, due to their high-profile role in global litigation regarding smart phones and tablets. U.S. companies who face the difficult task of protecting their inventions from infringement overseas are now more likely to want to consider these patents as a cost-effective tool, despite their limitations.
Our panel will focus on the filing and uses of design patents outside the U.S., including the Hague Agreement Concerning International Registration of Industrial Designs. In December, the U.S. finally signed into law its implementation of that Agreement, which creates procedures at the USPTO to receive and prosecute international design applications. Late this year, U.S. applicants will be able to file a single design application to target over 40 nations and the European Union. Benefits may even accrue to patent owners in the U.S. market. While the U.S. historically has not published design patent applications, the Hague System publishes applications within six months after WIPO completes its review of formal requirements. Design patent owners whose applications are published by WIPO will have the ability to collect certain damages for pre-issuance infringement in the U.S.
Our panelists will discuss the current state of design patent protection in different countries, and analyze the benefits and shortcomings of design patent protection available under the Hague System, including how it is similar and different from the Patent Cooperation Treaty (PCT). They will also consider the important open questions regarding implementation by the USPTO.
- David Gerk, USPTO
- Robert Katz, Banner & Witcoff
- Damian Porcari, Ford Global Technologies LLC
Design Patent LitigationWebinar Date: 06/07/2012
Design patents have come to the fore in the smart phone wars. For instance, Apple could win a preliminary injunction in the U.S. against Samsung’s Galaxy tablet on the basis of infringement of one of Apple’s design patents covering its iPad. On May 14, the Federal Circuit partially vacated an order denying Apple a preliminary injunction and remanding the matter for further proceedings.
This webinar will examine hot topics in design patent litigation, and how they are playing out in recent decisions. Among the issues to be discussed:
- What is the current state of law on the issues of design patent obviousness and anticipation?
- Will the Apple v. Samsung court’s strict reading of the In re Rosen “basically the same” requirement make it more difficult to prove obviousness in future design patent cases?
- How have courts been addressing so-called “functional features” in view of the Federal Circuit’s decision in Richardson v. Stanley Works?
- What are the implications of the Federal Circuit accepting Apple’s “design dilution” theory of irreparable harm?
- Will the court’s requirement of a “nexus” between a patented feature and market demand become a factor in injunction analysis for both design patents and utility patents?
Our panel includes design-patent specialists at two law firms and an in-house IP enforcement counsel.
- Daniel Brean, The Webb Law Firm
- Chris Carani, McAndrews, Held & Malloy, Ltd.
- Lucy Nichols, Nokia Inc.
Design Patents: Where Do They Stand After Recent Federal Circuit Decisions?Webinar Date: 04/15/2010
Three recent decisions by the Federal Circuit continue to raise the profile of design patents. One of the decisions
– Croc v. ITC – confirmed the value of design patents to patentholders. There the Court overturned the ITC’s
finding of no infringement of a design patent, stating that the infringement analysis should be done by applying
the ordinary observer test while viewing the design as a whole. International Seaway Trading v. Walgreens, the
court may have weakened design patents by concluding that the “ordinary observer” test is the sole test for
assessing the anticipation of design patents. And in March in Richardson v. Stanley Works, the Court affirmed a
district court decision, making it clear that a design patent does not extend to any functional elements of the
claimed article. A panel of experts will elucidate the cases and give a sophisticated appraisal of where design
- Christopher V. Carani, McAndrews, Held & Malloy
- Robert S. Katz, Banner & Witcoff, Ltd
- Damian Porcari, Ford Global Technologies, LLC
The Pros & Cons of Utility Models – An International OverviewWebinar Date: 02/18/2010
Utility models are underused, say proponents, and they can be a good way to protect products overseas in fast-moving industries because they are much quicker and easier to obtain than more rigorously-examined patents. But there are drawbacks that practitioners need to understand, as well as the complication that rules vary by country. This panel features patent lawyers who have experience with utility models to explicate how they can best be used overseas, how they work with PCT applications, and what are their weaknesses.
• Brett Alten, Apple Inc.
• Alex Chartove, Morrison & Foerster, LLP
• G. Peter Nichols, Brinks Hofer Gilson & Lione