Mobile Devices

Elisabeth Fink Boards of Appeal, OHIM

Patrice de CandéGeneral Partner of de Candé-Blanchard

Chris Carani McAndrews, Held & Malloy Ltd.

Chair: Darren Smyth Partner in Charge, EIP Elements Practice Group

Designs for Mobile DevicesUS Perspective

Chris Carani McAndrews, Held & Malloy Ltd.

Outline of Today’s Discussion

1. Dotted Lines

2. Design Corpus (i.e. Prior Art) and Infringement

3. Nature of the Product

4. Features Dictated by Technical Function

General Rule (U.S.)

“Solid lines” are part of claim design.”

“Dotted lines” are NOT part of claimed design.”

Dotted Lines

Microsoft Webcam, US Patent D647,937

Mount is not part of claimed design

Dotted Lines

Microsoft Webcam, US Patent D647,937

US D647,933“ELECTRONIC CAMERA”

US D647,946“SUPPORT FOR ELECTRONIC CAMERA”

Multiple Applications

Dotted Lines and Continuation Practice

D548,744(entire device)

D573,223(screen, no click wheel)

D562,847(no screen, click wheel)

Dotted Lines and Continuation Practice

Filing8/24/05

Filing3/22/07

IssuanceD548,744

IssuanceD573,606

Filing05/08/07 Abandoned

Filing2/13/09

IssuanceD650,355

Filing08/10/11

IssuanceD656,159

Etc.

Apple’s US D593,087 has 6 Embodiments

Apple D‘087Embodiment 5

Apple D‘087Embodiment 6

Apple D‘087Embodiment 4

Apple D‘087Embodiment 3

Apple D‘087Embodiment 2

Apple D‘087Embodiment 1

Embodiment Speaker Screen Border Home Button

1 Unclaimed Unclaimed Claimed

2 Unclaimed Claimed Unclaimed

3 Claimed Unclaimed Unclaimed

4 Unclaimed Claimed Claimed

5 Claimed Unclaimed Claimed

6 Claimed Claimed Unclaimed

Importance of Dotted Lines

Apple’s ‘087 Design Samsung’s Accused Galaxy 4 S

5 64321

Claimed Not present

Apple’s US D593,087

Apple’s US D593,087

Importance of Dotted Lines

Apple’s ‘087 Design Samsung’s Accused Galaxy 4 S

Disclaimed

Design Corpus and Design Patent Infringement

Set the way back machine…Gorham v White (1871)

Gorham v. White (1871)

Gorham v. White (1871)

If…“in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

Egyptian Goddess, Inc. v. Swisa, Inc. (2008)

1. “Is the overall appearance of the claimed patented design

2. substantially the same as

3. the overall appearance of the accused design

4. in view of the prior art?”

Eye of an Ordinary Observer:

Gorham v. White (1871)

Gorham v. White (1871)

Gorham v. White (1871)

INFRINGEMENT

Gorham v. White (1871)

Prior Art

Gorham v. White (1871)

Prior Art

NON-INFRINGEMENT

Nature of the Product

US D513,395Title: Automobile Body

Accused Product Automobile

Nature of the Product

US D513,395Title: Automobile Body

Accused Product Go-Cart or UTV

Nature of the Product

US D513,395Title: Automobile Body

Accused Product Child’s Toy

Nature of the Product

US D593,087Title: Smartphone

Accused Product Child’s Toy

Two Distinct Functionality Concepts: (1) Validity and (2) Scope of Protection

Concept 1Validity – Overall Appearance of Claimed Design.

Concept 2Scope of Protection – Appearance of Individual Features.

Concept 1: Functionality - Validity

Validity Question: Is Appearance of Overall Claimed Design Dictated by Function?

Patented Design 1 Patented Design 2 Patented Design 3

Concept 2: Functionality – Scope of Protection

Scope of Protection Question: Is Appearance of Claimed Design Feature Dictated by Function?

Patented Design Accused Design

32

‘167 Patented Design Accused DesignPrior Art

Richardson v. Stanley Works, Inc. (2010)

33

Claim Construction – as a Matter of Law

“Richardson's multi-function tool comprises several elements that are driven purely by utility. As the district court noted, elements such as the handle, the hammer-head, the jaw, and the crowbar are dictated by their functional purpose.”

2

41

3

hammer-head

jaw

handlecrow-bar

34

Claim Construction

“Discount,” “Ignore,” “Factor out,” these features.

35

1

3

4

2

hammer-head

jaw

handle

crow-bar

36

1

3

4

2

hammer-head

jaw

handle

crow-bar

37

1

4

3

2

hammer-head

jaw

handle

crow-bar

38

1

3

4

2

hammer-head

jaw

handle

crow-bar

Claim Construction = Claim Destruction

Functionality – Scope of Protection

Scope of Protection: Are there any features “dictated by function”?

Questions